OPPOSITION No B 2 527 276
H.G. Ritchie Limited, Jamestown Road Inchicore, Dublin, Ireland (opponent), represented by Maclachlan & Donaldson, 2b Clonskeagh Square, Clonskeagh Road, Dublin D14 V0N2, Ireland (professional representative)
a g a i n s t
Moo Free, 59-61 Milford Road, Reading RG1 8LG, United Kingdom (applicant), represented by Baron Warren Redfern, 1000 Great West Road, Brentford TW8 9DW, United Kingdom (professional representative).
Class 30: Chocolate; chocolates; chocolate sweets; chocolate truffles; chocolate confections; confectionery chocolate products; chocolate confectionery products; pralines made of chocolate; confectionery items formed from chocolate; ice creams flavoured with chocolate; chocolates with mint flavoured centres; chocolate-based ready-to-eat food bars; non-medicated flour confectionery containing imitation chocolate; chocolate confectionary; candy with cocoa; chocolate cake; chocolate cakes; chocolate covered cakes.
2. European Union trade mark application No 13 781 612 is rejected for all the above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
opponent filed an opposition against all the goods of European Union
trade mark application No
No 80 255: MOO!
No 240 852 (series mark):
No 240 257 (series mark): MILKY MOO / MILKY MOOS / MILKY MOO’S
Earlier trade marks
The opponent invoked Article 8(1)(b) and 8(5) EUTMR for all of the earlier rights.
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 establishes due cause for the use of the contested trade mark.
Reputation of the earlier trade marks
According to the opponent, the earlier trade marks have a reputation in Ireland.
Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.
In the present case the contested trade mark was filed on 27/02/2015. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in Ireland prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely for the following goods.
Irish trade mark registration No 80 255:
Class 30: Non-medicated confectionery containing milk.
Irish trade mark registration No 240 852:
Class 30: Confectionery.
Irish trade mark registration No 240 257:
Class 30: Confectionery.
In order to determine the marks’ level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade marks, the intensity, geographical extent and duration of their use, and the size of the investment made by the undertaking in promoting them.
On 25/11/2015 the opponent submitted the following evidence to support this claim:
Six invoices addressed to customers in Ireland and dated 24/06/2015, 23/06/2014, 16/10/2013, 20/01/2012, 24/05/2011 and 06/01/2010. The invoices list several items but only the following show indications of the relevant trade marks: MILKY MOO MINT BAGS (18 Pks), MILKY MOO MINT JAR (1 Jar), MILKY MOO MINT BIGGIE BAGS (1 Pks), MILKY MOO TOFFEE (37 Pks), MOO MIX BIGGIE (36 pks). The sales figures have been redacted.
Six delivery dockets which correspond to the six invoices mentioned above.
Five customer statements showing the customers’ invoices, credit and balance for goods/services dated 31/05/2015, 30/05/2014, 31/12/2013, 31/10/2012 and 31/07/2011. The customers are all in Ireland. The sales figures have been redacted and the details in all of them refer only to “goods/services”. The statements do contain the figurative device although this is not directly and clearly linked to any of the relevant goods. Furthermore, the statements contain the figurative device which, whilst clearly and directly referencing the relevant goods (namely mints from the word and sweets/confectionery in general from the image), does not include the verbal element MOO which figures in the earlier rights. Furthermore, the presence of the word MILKY in this image is more likely to be seen as a descriptive adjective and, taken together both, will be understood as indicating that the goods are mints incorporating milk and that the distinctive element of the image is the stylised surname Ritchie’s.
Six hand completed order forms. The order forms consist of a list of confectionery items with space for the customer to indicate the number of each item they wish to order, a place for the customer’s name and address and an instruction to fax to a particular number. The forms have sufficient indications to indicate Ireland as the place of use. They are dated 15/09/2015, 03/12/2014, 19/07/2013, 30/11/2012, 26/10/2011 and 23/11/2010. The order forms list several items, but of those the following show indications of the relevant trade marks: MILKY MOO MINTS BIGGIE; MILKY MOO MIX BAGS; MILKY MOO FUDGE BAGS; MILKY MOO TOFFEE BAGS; MILKY MOO MINTS; MILKY MOO FUDGE MIX BAGS. The order forms do contain the figurative devices , although these are not directly and clearly linked to any of the relevant goods.
Six price lists dated from 2011 to 2015. The price lists are basic documents, with the opponent’s name, address, fax number, email and webpage address, and, except for the 2011 list, the devices and also appear at the top. The lists shows the following goods being offered for sale in euros: MILKY MOO MINT BIGGIE BAGS; MILKY MOO MIX BIGGIE; MILKY FUDGE; MILKY MOO TOFFEE.
Sixteen pages showing, primarily, photographs of individual products including the packaging, as well as two flyers, one photograph of a range of products and one packaging design. One of the items is dated with a stamp (10/06/2008) and another has a best before date, 12/2015, however, the rest are undated. The images show a range of sweets/confectionery such as mints, fudge, bon bons and fruit jellies in conjunction with the sign , although sometimes in blue not red, alongside other signs such as Ritchie’s as shown above as well as MILKY MOOS or MILKY MINTS.
Nine pages of photographs showing product stands of the opponent’s MOO! taken in various stores throughout Ireland. However, there is no identifying evidence to show the name of the stores or their location and only two photographs have time stamps (showing 2010 and 2011) whilst others are undated or have a handwritten indication of the date.
One page article from the Irish newspaper “The Herald”, which bears a handwritten indication of the year 2013. The article relates to an interview with the opponent’s managing director for 17 years and states that the opponent has been making sweets such as Milky Moo Mints and Ritchie’s After Dinner Mints since 1936.
One page extract from the BBCNews website dated 02/05/2013 showing a screenshot of a recorded interview carried out with the opponent and which shows a stand displaying the opponent’s products behind the interviewee. Unfortunately, the size and quality of the image is such that only the Ritchie’s brand can be made out.
A one page extract from the website www.liamgeraghty.com dated 22/11/2012 regarding a RTE (Raidió Teilifís Éireann – Ireland’s national public service broadcaster) program “The Business” regarding a visit made to the opponent’s factory where the opponent “has been making sweets (such as Milky Moo Mints) in Dublin since the 1930’s”.
Advertisement for the opponent’s Factory Tour and mentioning Milky Moo Mints from 2012. A hand written indication gives the source as “The Local News”, a Dublin area newspaper.
Two tweets from members of the public dated 21/04/2014 and 29/07/2015, one stating that Ritchie’s Milky Moo Mints are now in chewing gum form and the other saying that the person has seen the Ritchie’s Mints van 3 times in 3 different locations in the space of a week and this prompted a desire for mints along with the hashtag “#moo”.
One page from the image sharing website Flickr showing a bag of Ritchie’s Milky Mints bearing the device from 2011. Seven pages from online discussion forums (Yahoo! Answers, answers.com, wiki.answers.com, boards.ie, peoplesrepublicofcork.com) where questions are asked referring the opponent’s confectionery dated between 2008 and 2011.
Four pages showing promotional activity for the opponent’s confectionery, two referring to the Factory Tour in 2012 and 2013, one referring to the launch of Ritchie’s Milky Moo Mint and Ritchie’s After Dinner Mint chewing gum and the final one is an extract from the website of the supermarket ALDI showing a bag of Ritchie’s Milky Mints bearing the device from 2014.
Three screenshots showing the opponent’s website, ritchiesmints.ie, showing confectionery with either the or devices amongst others, undated.
Four photographs showing two vans bearing the devices and . One of the photographs bears a hand written indication of the year 2015 whilst the others are undated.
Extracts from various websites (the Irishfoodmarket.com, britishisleonline.com) showing the offering for sale of various items of the opponent’s confectionery under the names, such as Ritchie’s Milky Mints and Ritchie’s Milky Moo Toffee (bearing the MOO! device).
Five pieces of correspondence received from customers in relation to MOO confectionery, dated between 31/07/2012 and 23/06/2015 with one item undated.
Two pieces of correspondence received from customers in relation to red MOO stickers, one dated October 2013 and the other item is undated. The opponent claims that since the 1970s they have been putting red MOO stickers into packets of Milky Moo Mints.
Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent demonstrates that the earlier Irish trade mark registrations have acquired a degree of enhanced distinctiveness through their long standing use, but it is not sufficiently convincing with regard to the extent of the relevant public’s awareness to also prove reputation for the earlier marks.
All or virtually all of the evidence of the opponent mentions the trade mark ‘MOO’, as well as multiple references to ‘MILKY MOOS’, in relation to confectionery, most often mints, but also toffees, and other types of sweets. Furthermore, most, but not all the evidence is dated before the relevant date, and most, but not all, refers to Ireland. Therefore, there can be no doubt that the opponent has used the marks to sell confectionery in the relevant territory before the relevant time period.
However, as regards having a reputation the evidence is not convincing. Reputation requires recognition of the mark by a significant part of the relevant public. In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long- standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see, to that effect, 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 22).
The evidence does not include direct indications regarding the public’s awareness of the earlier marks (e.g. surveys or opinion polls). Furthermore, no information about the share in the Irish market that the marks hold has been provided.
Reputation could still be proved by other evidence, such as impressive and long term sales figures (backed up with evidence from independent sources such as published accounts, etc.) or through evidence of long standing marketing and advertising investments, or even by independent third party sources, such as declarations from professional associations, awards, journalistic coverage, etc. However, in this case the evidence provided by the opponent does not reach the necessary levels to support an argument of reputation; the proven sales figures are modest, as is the scope of economic activity and whilst there is some indication of investment in advertising it is not sufficient to indicate the large scale or long standing investment.
Therefore, the evidence submitted by the opponent does not allow the Opposition Division to reach a positive finding that the earlier marks have acquired a reputation in Ireland in relation to the mentioned goods.
However, several of the pieces of evidence attest to the long-standing use of the earlier trade marks, referring to their use since the 1930s (items 8 and 10). Furthermore, this independent evidence is further corroborated by unsolicited statements from members of the public such as “A family member aged 60+ remembers them in her childhood, so they are around a long time” and “These were my grandmothers favourite sweets, when she died back in March (2010)” (Item 13) as well as “My brother in law is 30 years old in the next 2 weeks and is a major fan of Milky Moo’s” (Item 18).
This long-term, but recognisable use, is considered sufficient to accept the claim that the earlier Irish marks enjoy some recognition in Ireland, and that the inherent distinctiveness of these marks has been enhanced to some degree through their use for the confectionery items from Class 30 claimed by the opponent.
As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade marks have a reputation. Since it has not been established that the earlier trade marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected insofar it is based on this ground.
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 must 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 will be rejected.
The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based.
The request was submitted in due time and is admissible as the earlier trade marks were registered more than five years prior to the relevant date mentioned above.
The contested application was published on 05/03/2015. The opponent was, therefore, required to prove that the trade marks on which the opposition is based were put to genuine use in Ireland from 05/03/2010 to 04/03/2015 inclusive.
Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:
Irish trade mark registration No 80 255:
Class 30: Non-medicated confectionery containing milk.
Irish trade mark registration No 240 852:
Class 30: Pastry and confectionery; ice cream; desserts in Class 30.
Irish trade mark registration No 240 257:
Class 30: Pastry and confectionery; ice cream; desserts in Class 30.
According to Rule 22(3) EUTMIR, the evidence of use must 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 07/03/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 12/05/2016 to submit evidence of use of the earlier trade mark. On 12/05/2016, 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:
A six page statutory declaration dated 19/04/2016 by Ronald Ritchie, Managing Director for the opponent. The declaration has been prepared for a different action, but one based on the same three earlier rights and against an application for an Irish trade mark MOO FREE. The declaration states that the value of confectionery sold in Ireland under the trade mark MOO has exceeded a significant number. Furthermore, it states that during each of the years 2010 to 2014 inclusive the opponent spent a certain amount on advertising confectionery under the trade mark MOO.
Four invoices dated 24/05/2011, 20/01/2012, 16/10/2013 and 23/06/2014 addressed to customers in Ireland. Multiple items are listed, but of those the following show indications of the relevant trade marks: MOO MIX BIGGIE (24 pks), MILKY ‘MOO’ TOFFEE (25 Pks), MILKY MOO MINT BIGGIE BAGS (1 Pks). The sales figures have been redacted.
Four delivery dockets which correspond to the four invoices mentioned above.
Four customer statements showing the customers’ invoices, credit and balance for goods/services dated 31/07/2011, 31/10/2012, 31/12/2013 and 30/05/2014. They are of the same type as described above as Item 3 under the Article 8(5) evidence.
Five hand completed order forms dated 2010 to 2014 and of the same type as described above as Item 4 under the Article 8(5) evidence.
Price lists dated 2011 to 2015 and of the same type as described above as Item 5 under the Article 8(5) evidence.
Four pieces of email correspondence received from customers in relation to MOO confectionery, dated between 2012 and 2013 (partially the same as Items 18 and 19 under the Article 8(5) evidence).
Newspaper article (same as Item 8 under the Article 8(5) evidence).
One page extract from the BBCNews website (same as Item 8 under the Article 8(5) evidence).
A one page extract from the website www.liamgeraghty.com (same as Item 8 under the Article 8(5) evidence).
Advertisement for the opponent’s Factory Tour (same as Item 11 under the Article 8(5) evidence).
Three pages from online discussion forums (Yahoo! Answers, boards.ie). (The same as which appears in Item 13 under the Article 8(5) evidence).
Two pages showing promotional activity for the opponent’s confectionery, one referring to the Factory Tour in 2012 and the other one is an extract from the website of the supermarket ALDI showing a bag of Ritchie’s Milky Mints bearing the device from 2014 (the same as which appears in Item 14 under the Article 8(5) evidence).
A tweet from a member of the public stating that Ritchie’s Milky Moo Mints are now in chewing gum form (the same as which appears in Item 12 under the Article 8(5) evidence).
As we have seen the opponent also submitted evidence of reputation as part of its further facts and evidence on 25/11/2015. This evidence is admissible for proving use and will also be taken into account. However, this evidence has already been listed and analysed above and the findings are equally valid here.
As seen above under the ground of Article 8(5) EUTMR the evidence filed by the opponent showed use (and indeed a degree of enhanced distinctiveness) for the opponent’s confectionery goods under Class 30.
However, in the evidence analysed above under Article 8(5) EUTMR, there are no mentions of the use of any of the marks in relation to pastries, ice cream or desserts. Additionally, in the evidence filed specifically for proving use of the earlier marks, the majority was the same (Items 8 through 14 were the same). Furthermore, the remaining news evidence also makes no mention of the use of any of the marks in relation to pastries, ice cream or desserts.
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 will, 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.
Therefore, in the present case, the evidence filed by the opponent only proves use for non-medicated confectionery containing milk and confectionery in Class 30. 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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s earlier Irish trade mark No 240 852 (series mark) and in particular the first one of the series.
The goods on which the opposition is based are the following:
Class 30: Confectionery.
The contested goods are the following:
Class 30: Chocolate; Chocolates; Chocolate sweets; Chocolate truffles; Hot chocolate; Chocolate confections; Confectionery chocolate products; Chocolate confectionery products; Pralines made of chocolate; Drinks based on chocolate; Confectionery items formed from chocolate; Ice creams flavoured with chocolate; Chocolates with mint flavoured centres; Chocolate-based ready-to-eat food bars; Non-medicated flour confectionery containing imitation chocolate; Chocolate food beverages not being dairy-based or vegetable based; Chocolate confectionary; Cocoa products; Candy with cocoa; Chocolate cake; Chocolate cakes; Chocolate covered cakes; Chocolate decorations for cakes; Chocolate-based fillings for cakes and pies.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not 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.
The contested chocolate sweets; confectionery chocolate products; chocolate confectionery products; pralines made of chocolate; confectionery items formed from chocolate; non-medicated flour confectionery containing imitation chocolate; chocolate confectionary; candy with cocoa are included in the broad category of the opponent’s confectionery. Therefore, they are identical.
The contested chocolate; chocolates; chocolate truffles; chocolate confections; ice creams flavoured with chocolate; chocolates with mint flavoured centres; chocolate-based ready-to-eat food bars are considered to be, at least, similar to the opponent’s confectionery, as they have a similar purpose, may come from the same providers and target the same users and they may be in competition with one another.
The contested chocolate cake; chocolate cakes; chocolate covered cakes are considered to be similar to the opponent’s confectionery, as they have a similar purpose, target the same users and they may be in competition with one another.
However, the contested hot chocolate; drinks based on chocolate; chocolate food beverages not being dairy-based or vegetable based; cocoa products; chocolate decorations for cakes; chocolate-based fillings for cakes and pies are considered to be dissimilar to the earlier right’s goods. This is because the contested goods are all types of drinks (hot chocolate; drinks based on chocolate; chocolate food beverages not being dairy-based or vegetable based; cocoa products) or ingredients for bakery products (chocolate decorations for cakes; chocolate-based fillings for cakes and pies), whilst the earlier goods are sweets. Therefore, these goods have a different nature and purpose to the opponent’s confectionery. Furthermore, they are not sold side by side, nor are they likely to come from the same sorts of manufacturers. Certainly in all the evidence filed by the opponent there is not a single mention of cakes or drinks so they are unlikely to frequently come from the same providers. Consequently these goods are considered to be dissimilar.
Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.
In the present case, the goods found to be identical or similar are directed at the public at large.
The degree of attention is considered to be average as they are mass produced items intended for daily consumption.
Earlier trade mark
The relevant territory is Ireland.
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 word ‘MOO’, which in the case of the first of the series of the earlier mark is the entire mark and which is the first element of the contested sign, will be understood as the sound made by a cow. This word has no meaning in relation to the goods in question and is, therefore, distinctive.
The word ‘Free’ present in the contested sign has several meanings, such as being at liberty, not beholden, without something and given or provided without charge, however, when coupled with the word ‘Moo’ it has no clear meaning, although it could possibly be seen as alluding to being free of dairy products, although this would require at least two mental steps by consumers. Therefore, the elements of the contested sign have no clear meaning in relation to the goods in question and they are, therefore, distinctive.
Neither sign has any element that could be considered to be more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in ‘MOO’ which is effectively the entirety of the earlier mark as the particular font in which it is written is a fairly standard one and not very distinctive, and the first element of the contested sign.
The similarities between the signs are such that the earlier mark is entirely reproduced in the contested sign, as its first element. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.
Therefore, the signs are visually similar to an above average degree.
Aurally, the pronunciation of the signs coincides in the syllable /muː/, present identically in both signs. The pronunciation differs in the syllable /friː/ of the contested sign, which has no counterpart in the earlier mark.
Therefore, the signs are phonetically similar to an average degree.
Conceptually, both signs have the meanings as explained above. Therefore, the signs are considered conceptually similar in so far as both signs refer to the concept of the sound made by a cow.
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.
According to the opponent the earlier trade mark has a reputation and an enhanced distinctive character in Ireland in connection with a part of the goods for which it is registered, namely confectionery. This claim has already been considered and evidence analysed above under Article 8(5) EUTMR and the findings there are equally valid here.
Consequently, on the basis of the above, the Opposition Division concludes that the earlier mark, whilst not having a reputation, does have a degree of enhanced distinctive character in relation with confectionery in Class 30.
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 (eighth recital 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).
Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (Lloyd Schuhfabrik, § 20; Sabèl, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
The earlier mark has a degree of enhanced distinctiveness. The relevant public is the public at large and the level of attention is average. 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 (Lloyd Schuhfabrik, § 26).
The conflicting goods are partly identical, partly similar and partly dissimilar.
The signs are visually similar to an above average degree, aurally similar to an average degree and conceptually, whilst not identical, they both provoke the idea of the sound of a cow.
Taking into account the above, it is considered that the similarities between the marks outweigh the differences so that the relevant public might be led to believe that the goods found to be identical and similar come from the same or economically linked undertakings.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and, therefore, the opposition is partly well‑founded on the basis of the opponent’s Irish trade mark No 240 852.
It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.
The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.
The opponent has also based its opposition on the following earlier trade marks:
The two remaining marks from Irish trade mark registration No 240 852 (series mark). namely and ;
Irish trade mark registration No 80 255 for the word mark MOO!;
Irish trade mark registration No 240 257 (series mark) for the word mark MILKY MOO / MILKY MOOS / MILKY MOO’S.
These other earlier rights cover the same scope of goods in Class 30 which have already been found dissimilar to the remaining contested goods in Class 30. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.
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 opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
Chantal VAN RIEL
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.