CANCELLATION No C 36 261 (INVALIDITY) 

 

Iberfruta-Muerza, S.A., Poligono Industrial, Parcela A, 31560 Azagra (Navarra), Spain (applicant), represented by Balder IP Law, S.L., Paseo de la Castellana 93, 28046 Madrid, Spain (professional representative)

 

a g a i n s t

 

AJM B.V., De Hork 42, 5431 NS Cuijk, Netherlands  (EUTM proprietor), represented by NLO Shieldmark B.V., New Babylon City Offices. 2e étage Anna van Buerenplein 21A, 2595 DA Den Haag, Netherlands (professional representative).

On 09/03/2021, the Cancellation Division takes the following

 

 

DECISION

 

 

1.	The application for a declaration of invalidity is rejected in its entirety.

 

2.	The applicant bears the costs, fixed at EUR 450.

 

REASONS

 

The applicant filed a request for a declaration of invalidity against European Union trade mark No 14 582 803 (figurative mark) (the EUTM). The request is directed against all the goods covered by the EUTM (namely in Classes 5, 29 and 30). The application is based on the following Spanish trade mark registrations:

1) No 1 023 939 ‘BEBE’

2) No 2 023 959

3) No 95 916

4) No 566 586

The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR and with Article 8(5) EUTMR.

 

 

SUMMARY OF THE PARTIES’ ARGUMENTS

  

The applicant argues that there exists a likelihood of confusion between the marks at issue, considering that the challenged EUTM registration has simply added ornamental or descriptive/ laudatory elements to the main distinctive word, ‘BEBE’. Moreover, the applicant argues that the verbal element is the dominant element of the contested mark. It puts forward that the crown will be linked to royalty and the Spanish term for king, REY, which is almost identical to the prefix ‘Roy’ (arising from royal), and thus considered a laudatory and descriptive element.

Referring to Document 14, which contains the advertisement campaign ‘DESAYUNA COMO UN REY. MERMELADAS BEBÉ’, meaning ‘HAVE BREAKFAST LIKE A KING. BEBE’S MARMALADES’, carried out by EQUMEDIA, the applicant concludes that the consumer may establish a connection between the contested sign and the earlier marks.

In support of its arguments, the applicant refers to several decisions of the Opposition Division, namely B 1 564 643 of 13/07/2019 (BEBE vs. ), B 1651259 of 10/03/2011 (BEBE vs. BIOBEBE), B 2 071 630 of 22/08/2013 (BARON vs. ), B 2 926 023 of 23/05/2018 (HAPPY DAY vs. ), B 2 099 078 of 12/07/2013 (HIVE vs. ), B 2 728 213 of 10/08/2017 (ICE vs. ), as well as decisions of 28/02/2019 (ACER vs. DXRACER), 28/09/2018 (BEATS vs. WINBEATS), 28/03/2018 (CHOO vs. RECHOO), 26/06/2017 (FLEX vs. PERMAFLEX) and of 27/03/2017 (eBay et al. vs. ), and a decision of the Boards of Appeal of 02/05/2017, R 2292/2016-2 (SEVENFRIDAY vs. SEVEN).

In relation to Article 8(5) EUTMR, the applicant points out that the EUIPO has already acknowledged the recognition of BEBE marks through the evidence filed in the case at hand. According to the applicant, the information currently provided as documents 1, 2, 3, 4, 5, 7, 8, 9 and 13 has already been assessed by the EUIPO in several decisions, attached as Document 9, and the Office concluded that they were sufficient to show reputation of the mark BEBE. In this regard, it argues that, according to the judgment of 28/06/2018, C‑564/16 P, the Office has to take its own previous decision practice into account and, therefore, the applicant expects that the same conclusion of reputation is reached in this case.

It considers that the earlier trademarks are generally known in the Spanish market, where they enjoy a consolidated position among the leading brands. The surveys conducted attest that Spanish consumers name the opponent’s mark as one of the main brands for jams. In the view of the applicant, the evidence adduced represents the results of a significant amount of investment in effort, time and money, which has been maintained during a considerable period of time.

Moreover, the applicant claims that use of the contested EUTM for any of the goods covered in Classes 5, 29 and 30 would take unfair advantage of the distinctive character or the repute of the earlier trade marks.

 

The EUTM proprietor requests that the applicant submit proof of use of the earlier trade marks.

Upon receipt of the evidence filed by the applicant, it notes that the applicant is missing some relevant factors in relation to the submitted proof of use and proof of reputation. For example, it points out that the evidence does not include any numbers or percentages of recognition of the applicant’s trade marks by the relevant public, and that the evidence of reputation heavily relies on earlier administrative proceedings, both of the Spanish Patents and Trademark Office and the EUIPO, as it did in the previous opposition proceedings.

The EUTM proprietor considers it well-known that it is not sufficient to simply refer to the recognition of reputation in a separate administrative procedure, as the EUIPO should assess each case on its own merits. Besides, the proprietor notes that it did not have the chance to examine and challenge the facts on which those earlier decisions were based – a fact also clearly pointed out by the Board of Appeal in relation to prior proceedings between the parties (10/01/2019, R 664/2018-4).

Based on the documents submitted by the applicant, the proprietor concludes that no use or reputation has been demonstrated for the earlier trade mark registrations on which the application is based, in particular, as no survey on the consumers’ recognition and no evidence of any advertisement campaign has been submitted for the period between 24/06/2014 and 24/06/2019. In the view of the proprietor, the percentages of the market share, on their own, are too low to assume a reputation.

What is more, the EUTM proprietor points out that this application concerns exactly the same facts, parties, trade marks and grounds as the opposition proceedings. It notes that perhaps technically the cancellation action cannot be declared inadmissible on the basis of res judicata, due to the different cause of action. However, it considers that a different outcome would only

be justifiable if new facts were presented and proven, or if the manner in which key legal assessments are made had changed. In this regard, it notes that only some translations of evidence already submitted in the previous proceedings have been submitted, and very few new evidence. These minor and insignificant differences, so the proprietor argues, should not lead to a different outcome than the outcome of the opposition proceedings. For the sake of completeness, the proprietor reiterates what it argued in these opposition proceedings, with regard to the legal arguments involving Article 8(1)(b) and Article 8(5) EUTMR. These documents are attached as ANNEX A, B, C and D.

With regard to the similarity of the signs, the EUTM proprietor elaborates that the word ‘RoyBébé’ does not have a meaning, and neither do the Chinese characters. Moreover, as was also confirmed by the EUIPO in the opposition proceedings, the most distinctive and dominant elements of the contested EUTM are the first part Roy and the Chinese characters, since the element ‘Bébé’ may allude to some of the registered goods and ‘Roy’ is the first part of the sign and does not have a meaning in Spanish. Furthermore, it takes the view that the Chinese characters stand out, because Chinese trademarks are still rather unusual in the EU and even more so a combination with Latin characters.

What is more, the EUTM proprietor puts forward that the earlier trade marks, and in particular registration No M 1023939, ‘BEBE’, have a very low inherent distinctive character, as the word BEBE means ‘baby’ in Spanish.

The EUTM proprietor concludes that, as was established in the opposition proceedings, there is no likelihood of confusion between the earlier trade marks and the contested EUTM. The signs are dissimilar and apart from jams, the goods are also dissimilar. No additional facts, nor any new evidence have been submitted which could lead to another outcome of the assessment on the likelihood of confusion.

With regard to Article 8(5) EUTMR, the EUTM proprietor notes that the applicant believes that it needs to provide evidence of reputation only in relation to the time of filing of the contested EUTM, i.e. 22/09/2015. However, so it points out, reputation also needs to be proven in relation to the time when the decision on the invalidity of the contested EUTM is taken. As there is a considerable time span between those dates, the applicant has to prove the reputation for two separate periods. The evidence for the earlier period cannot be used for the current period. However, very little evidence for the second period has been submitted relating to the reputation of the earlier trade marks.

The EUTM proprietor argues that, even if the applicant had proven a reputation of its trade mark registrations – quod non – it could not rely on the provisions laid down in Article 8(5) EUTMR, as the criteria are not met. Not only because the signs are dissimilar, but also because no evidence or arguments are filed with regard to the unfair advantage or detriment to the earlier trade marks.

The proprietor therefore requests the EUIPO to reject the application.

The applicant disputes the arguments put forward by the EUTM proprietor and, in essence, reiterates what it has stated before.

ADMISSIBILITY

Pursuant to Article 63(3) EUTMR, in addition to any particular defence that an EUTM proprietor may raise against an application for a declaration of invalidity or against a revocation application (see paragraphs above), an invalidity or revocation application is inadmissible where an application relating to the same subject matter and cause of action, and involving the same parties, has been adjudicated on its own merits by an EUTM court or by the Office and a final decision has been taken. This is what is known as the ‘triple-identity’ requirement.

The defence of res judicata only applies where there is a previous final decision on the substance in a counterclaim or cancellation application. The bar to admissibility does not apply, for instance, when a cancellation application was withdrawn before the corresponding decision became final (12/05/2014, R 1616/2013-4, PLAYSEAT, § 13) or when the previous final decision declared the application inadmissible (e.g. because the contested EUTM was not yet registered) and did not adjudicate on the substance.

However, as also stated by the EUTM proprietor, a prior decision by the Office in opposition proceedings between the same parties and relating to the same mark does not preclude a later cancellation request based on the same earlier rights (14/10/2009, T-140/08, TiMiKinderjoghurt, EU:T:2009:400, § 36, appeal to the Court dismissed; 22/11/2011, T-275/10, Mpay24, EU:T:2011:683, § 15; 23/09/2014, T-11/13, Mego, EU:T:2014:803, § 12), since the cause of action is different. However, a different outcome in invalidity or revocation proceedings is unlikely to arise except where one or more of the following conditions is fulfilled:

 New facts are proven (e.g. proof of use or reputation of the earlier mark, not made available during opposition proceedings).

 The manner in which key legal assessments are made has changed (e.g. with regard to the standards for assessing likelihood of confusion), for example as a result of intervening judgments of the Court of Justice of the European Union.

It follows that the application is admissible.

PROOF OF USE

 

Proof of use of the earlier marks was requested by the  EUTM proprietor. However, at this point, the Cancellation Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T-296/02, Lindenhof, EU:T:2005:49, § 41, § 72). The examination of the invalidity request will proceed as if genuine use of the earlier marks had been proven for all the goods invoked, which is the best light in which the applicant’s case can be considered.

 

REPUTATION – ARTICLE 60(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 8(5) EUTMR

 

The applicant claimed that the earlier marks have a reputation in Spain in relation to jellies, jams and dietetic jams.

 

According to Article 60(1)(a) EUTMR, a European Union trade mark will be declared invalid on application to the Office where there is an earlier mark, as referred to in Article 8(2) EUTMR, and the conditions set out in Article 8(1) or (5) EUTMR are fulfilled.

 

According to Article 8(5) EUTMR, upon opposition by the proprietor of an earlier registered trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which registration is sought 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 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 applicable in the context of invalidity proceedings only when the following conditions are met.

 

(a) The signs must be either identical or similar. 

 

(b) The earlier trade mark must have a reputation. The reputation must be prior to the filing of the contested trade mark and must still exist at the time of filing of the invalidity request; it must exist in the territory concerned and for the goods and/or services on which the application for a declaration of invalidity is based. 

 

(c) Encroachment upon reputation: 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 application for declaration of invalidity under Article 60(1)(a) EUTMR in conjunction with Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41).

a) Reputation of the earlier trade marks

 

Reputation implies a knowledge threshold that 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 invalidity proceedings, an invalidity applicant relying on reputation must prove that its earlier right has acquired reputation by the filing date of the contested EUTM, taking account, where appropriate, of any priority claimed (Article 60(1) EUTMR, second subparagraph).

 

In addition, the reputation of the earlier mark must still exist at the time when the decision on the invalidity request is taken, given that the conditions set out in the first subparagraph of Article 60(1) EUTMR are formulated in the present tense. Therefore, the applicant should also prove the reputation of the earlier mark at the time of filing of the invalidity request, in which case, and unless there is proof to the contrary, the Cancellation Division will assume that it continues to exist at the time when the decision on invalidity is taken.

 

The contested trade mark was filed on 22/09/2015. Therefore, the applicant was required to prove that the trade marks on which the application is based had acquired a reputation in Spain prior to that date and that it continued to exist at the time of filing of the invalidity request, that is, on 24/06/2019. The evidence must also prove that the reputation was acquired for the goods for which the applicant has claimed reputation, as mentioned above.

  

In order to determine the mark’s 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 mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

 

On 26/06/2019 the applicant submitted the following evidence:

 

DOCUMENT 1: A one-page printout from the website www.bebe.es in English, dated 09/02/2016, with information on the history of the company; 15 pages from undated catalogues showing products, in Spanish and English; three webpage printouts from www.bebe.es, dated 09/02/2016, showing a few packaging samples.

DOCUMENT 2: A document entitled ‘Datos de Mermeladas y Confituras: Nielsen JJ 2006’ containing several tables of figures and percentages. Its quality does not allow for all the details to be deciphered. The applicant indicates in its submissions that the document’s title in English is ‘Jam and marmalade: Nielsen JJ 2006’ and that the tables include figures for the ‘BEBE’ mark compared with those for other marks in the following categories: ‘volume share development’, ‘value share development’, ‘trademarks share (Light + Diet + Sugar Free)’ and ‘areas analysis’. Corresponding, hand-written remarks have been left in the document itself. The applicant further points out that the Opposition Division assessed this document in relation to proceedings No B 2 903 907, B 2 198 037 and B 1 889 222 (attached as Document 9) and concluded that the opponent’s 'BEBE' marks had 4,7% of the market share in 2005, 4.0% of the market share in 2006, 2.6% in November 2009, 2,7% in May 2010, 2.5% in April 2012, 2.4% in July 2012 and 2.4% in February 2013.

DOCUMENT 3: A report by Vizeum entitled ‘Bebe Del 17 al 30 de Abril Cierre de Campaña’, dated 11/05/2006. According to the applicant’s submissions, it contains details of a TV advertising campaign for ‘BEBE’ goods in Madrid and Catalonia from 17/04/2006 to 30/04/2006. However, the quality of the document does not allow for all the details to be deciphered. 

A letter in Spanish from Vizeum Iberia, dated 10/06/2013, and a translation into English, referring to an amount invoiced for advertising campaigns for the product ‘Bebé mermelada' in 2012.

A letter in Spanish from Equmedia, dated 12/06/2013, and a translation into English, referring to the investment in communication media by Iberfruta-Muerza, S.A. in 2012. There is no mention of any of the earlier marks.

DOCUMENT 4: Five extracts from online publications and an extract from a professional leaflet (headed ‘Axis Communications’), dated between 1999 and 2008. In its observations, the applicant has provided partial translations. Insofar as they mention the trade mark 'BEBE', it is stated as follows: the brand is marketed by Valladolid (El Norte de Castilla); according to an analysis of eight samples of strawberry jams, 'BEBE' is among the best tasting and hardly contains any additives (Eroski Consumer); that the company BEBE performed a search for technologies to improve the manufacturing process and quality control of its products (Axis Communications); that Helios acquired the industrial assets and brand BEBE jams through Iberfruta-Muerza (the most ambitious of several large transactions) (Castilla y León Económica) and that the acquisition of the BEBE Factory will allow Iberfruta to reach 47 million this year (Navarra Innova).

DOCUMENT 5: Two extracts from a Spanish consumer product-review website showing consumers’ opinions about ‘Bebé’ strawberry jam and ‘Bebé’ peach jam. The opinions are in Spanish and are dated between 2001 and 2003 together with a translation into English.

DOCUMENT 6: Three pages of copies from a Spanish brochure of BEBE marmalade/jam products, undated. The mark can be seen on product packaging.

DOCUMENT 7: A letter from the Director of Marketing of Helios, dated May 2006, and a translation into English, indicating the company’s annual expenditure on marketing campaigns during the period 2004-2006 (without specifying for which products).

DOCUMENT 8: Five refusal decisions issued by the Spanish Patent and Trade Mark Office (OEPM), dated 25/05/2009, 08/07/2015 and 16/05/2017, concerning applications for national trade marks containing the word ‘BEBE’, and translations into English. Inter alia, it is reasoned that the applications are incompatible with earlier mark No M 1023939 ‘BEBE’, as there exists a likelihood of confusion/association, considering that the earlier mark is well-known, and that the applications could take unfair advantage of the earlier trade mark.

DOCUMENT 9: Seven decisions issued by the Opposition Decision in 2010, 2011, 2012, 2016 and 2018 in Spanish and English, with partial translations into English, according to which the Office acknowledges genuine use and reputation of the trade mark 'BEBE', as well as a likelihood of confusion in some of the cases.

DOCUMENT 10: A significant number of invoices issued by Dulces y Conservas Helios S.A. to several supermarkets in Spain during the years 2005 to 2016 together with a translation of the most important terms. They include product names such as ‘merm. Fresa BEBE’. The applicant indicates that ‘merm.’, ‘MDA.’ And ‘CONF.’ stand for ‘marmalade/jam’. No indication is given for the total quantities of turnover for any products in particular, or at all. 

DOCUMENT 11: Three pages of English translations of TV advertising invoices from a Spanish company dated 30/04/2006 (the invoices themselves were submitted in evidence to the Office on 22/12/2011 in opposition proceedings No B 1 889 22 as Annex 2), all for BEBE jam. 

DOCUMENT 13: A number of market reports issued by Nielsen from 2010 to 2013, said to compare the BEBE mark with others. Reliance is placed in particular on pages 8, 11, 35, 52, 69, 86, 100 and 114 in each, where the market share held by BEBE in Spain is said to be shown (all for marmalades and jams). The documents are in Spanish, but the applicant explains that: page 8 shows how the marks EVA, BEBE and HELIOS behave within the market, establishing BEBE as ‘the dominant mark with constant and even marks since 2010’; page 11 shows the amount of jams sold during the time frame clearly mentioned in the chart, proving that the mark is used and in a very sizeable amount; and page 35 shows the sales percentage measured at great scale, by distribution channels, ‘this specific chat shows how “BEBE” is sold and position in Hypermarkets, meaning big retail stores more than 1000m2. In this case “BEBE” moves along the 2% rating.’ The applicant claims that the study continues to prove mainly the reputation and recognition earned by BEBE over the years within the Spanish market, but also proves that the sign is in constant use, maintaining its position in the market and playing a very important role within.

DOCUMENT 14: Nine invoices, dated September to November 2013, and accompanying e-mails, together with two samples of the campaign. The documents are in Spanish. The invoices are issued to Iberfruta Muerza S.A and mention ‘Bebe’. According to the applicant, they refer to a press advertising campaign and show the format (SOPORTE) on which the press advertsing took place (the magazines Pronto, Enfemenino, Vocento, Hola, Lecturas, Saber Vivir, Cosas de Casa, Cocina Fácil, among others).

DOCUMENT 15: Printouts in relation to Mermelada Bebé’s social media presence, dated 01/06/2016. They comprise a three-pages extract from Facebook, showing 21 818 ‘likes’ for the overall presence and four posts from May 2016, each with 4 to 13 likes, and a four-pages extract from Twitter, revealing that the user ‘Mermelada Bebé’ has joined in September 2011 and has 671 ‘followers’.

DOCUMENT 16: A two-pages extract showing the result of a Google research of 23/08/2016 for images with the key words ‘mermelada bebe’.

The evidence submitted by the applicant does not prove that the earlier trade marks acquired a reputation which continued to exist at the time of filing of the invalidity request, that is, on 24/06/2019.

  

The invoices submitted as DOCUMENT 14 in relation to an advertising campaign in a number of magazines, although they could, in principle, support the applicant’s claims, are all dated between September and November 2013. First, this period is almost six years from the filing date of the application and, second, it is very short. Moreover, no information has been provided with regard to circulation figures. Apart from this instance, the only evidence with regard to advertising can be found in DOCUMENTS 3 and 11, both in relation to TV advertising, but most of these items are dated significantly before the relevant period, namely April 2006. As regards the two letters included in DOCUMENT 3 and dated 2012, the Cancellation Division notes that no information on the mentioned advertising campaigns and communication media as such has been provided; one of the letters does not even contain any mention of the earlier marks, but only generally refers to the applicant’s company. It follows that the materials relating to promotional campaigns are not conclusive either, as they include no information about or evidence of the extent of the distribution of these promotional materials among the relevant public, and they contain no verifiable data to demonstrate that extensive sales have been made or that there has been considerable marketing expenditure.

DOCUMENTS 2 and 13 provide some information in relation to BEBE’s relative market share up to the year 2013, insofar as these details are decipherable (in particular, with regard to DOCUMENT 2). However, apart from the fact that these data originate from a time at least six years prior to the filing of the present application, they do not reveal an overall picture of the relevant market in terms of absolute figures, nor do they demonstrate the degree of recognition by the relevant public directly. BEBE’s market share of around 2% from 2010 to 2013 does not shed any light on its market share in 2019, nor is it sufficient to immediately conclude that the mark had a reputation at the time, and even less that such reputation continued to exist at the time of filing of the present application.

Despite showing some use of the trade marks, the evidence provides little information with regard to the relevant period extending from the filing date of the contested EUTM on 22/09/2015 to the date of filing of the invalidity application on 24/06/2019. In fact, most of the evidence dates from a time significantly prior to the date of filing of the application, namely from 1999 to 2013 and, therefore, is not conclusive for the purpose of the present proceedings. Only a few items of evidence are dated after that period, the most recent being invoices, Google search results, printouts from the website www.bebe.es, and printouts in relation to Mermelada Bebé’s social media presence, all from 2016.

Apart from the fact that 2016 is still three years prior to the filing of the present application, the documents filed are not sufficient to prove a reputation of the earlier marks. In particular, the invoices, printouts from the website www.bebe.es and Google search results do not provide any indication of the degree of recognition of the trade marks by the relevant public. The printouts in relation to Mermelada Bebé’s social media presence cannot change this finding either, considering, in particular, the amount of ‘followers’ and ‘likes’ shown in them and that, moreover, these numbers are not representative with regard to the recognition of the earlier marks required in the present proceedings, as they do not reveal any details in relation to those followers. For example, it remains unclear how old they are or if they even reside in Spain.

With regard to DOCUMENT 8, the Cancellation Division notes that decisions of national courts and national offices regarding conflicts between identical or similar trade marks at national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system, which applies independently of any national system (13/09/2010, T‑292/08, Often, EU:T:2010:399).

Similarly, and with regard to DOCUMENT 9, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous national and Office decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings. However, the Cancellation Division notes that it is a matter of established case-law that any party relying on the reputation or distinctive character of its earlier mark has to establish, in the circumscribed context of each set of proceedings to which it is a party and on the basis of facts which it considers most appropriate, that that mark has acquired such a distinctive character. It cannot merely claim to adduce that evidence by virtue of the recognition of such a distinctive character, including for the same trade mark, in a separate administrative procedure. If it were sufficient for the applicant to rely on a previous decision of the Office or of another EU Member State trade mark office to demonstrate the enhanced distinctive character of its earlier word mark, that, first, would infringe the intervener’s rights of defence, to the extent that it could not examine, assess and challenge the facts on which those instances relied, and, second, would extend, in error, the principle of res judicata to an administrative decision which concerned parties other than the parties to the proceedings, thereby impeding the review of the legality of an administrative decision by a judicial authority, which would be clearly contrary to the principle of legality. Accordingly, reliance upon previous findings in proceedings against different parties concerning reputation or enhanced distinctive character of a trade mark cannot automatically be accepted as proof of the same in these proceedings without also filing precisely the same evidence as filed in those proceedings (10/01/2019, R 664/2018-4, RoyBébé (fig.) / Bebe et al., § 38 f.; 23/10/2015, T-597/13, DADIDA, EU:T:2015:804 § 39 to 46).

On 21/01/2020, the applicant submitted further evidence in relation to the EUTM proprietor’s request for proof of use of the earlier marks, which includes items referring to the period from 24/06/2014 to 24/06/2019 specifically. These items comprise the following:

DOCUMENT 9: Six refusal decisions issued by the Spanish Patent and Trade Mark Office (OEPM), dated 19/01/2015, 08/07/2015, 18/01/2017, 24/02/2017, 16/05/2017 and 26/07/2018, concerning applications for national trade marks containing the word ‘BEBE’, and translations into English. Inter alia, it is reasoned that the applications are incompatible with earlier mark No M 1023939 ‘BEBE’, as there exists a likelihood of confusion/association, considering that the earlier mark is well-known, and that the grant of the registrations applied for would involve a use or impairment of the reputation of the earlier mark.

DOCUMENT 10: Printouts in relation to Mermelada Bebé’s social media presence, dated 16/12/2019. They comprise a five-pages extract from Facebook, showing 31 791 ‘likes’ for the overall presence and 31 737 ‘followers’, a four-pages extract from Instagram, showing that the user ‘mermeladabebe’ has 100 publications and 8 784 ‘followers’, and a twelve-pages extract from Twitter, revealing that the user ‘Mermelada Bebé’ has joined in September 2011, has published 1 682 ‘tweets’ and has acquired 2 355 ‘followers’ and 15 ‘likes’.

DOCUMENT 11: Invoices issued by the applicant to Dulces y Conservas Helios S.A. and by the latter to several supermarkets in Spain during the years 2014 to 2019 together with a translation of the most important terms. They include product names identical or similar to those shown in DOCUMENT 10 of the first submission. No indication is given for the total quantities of turnover for any products in particular, or at all. 

DOCUMENT 12: Two decisions issued by the Opposition Decision in 2016 and 2018 in Spanish and in English, with partial translations into English, according to which the Office acknowledges genuine use and reputation of the trade mark 'BEBE'.

DOCUMENT 13: A one-page screenshot of 09/10/2019, showing the result of a Google research based on the key words ‘bebe mermelada’.

DOCUMENT 14: A three-pages document ‘DATOS DE MERCADO – MERMELADA & CONFITURA : 1º SEMESTRE 2019’, of unknown origin, showing bar charts in relation to market shares in volume (kg) and in value (EUR) for, inter alia, ‘BEBE’ (at 2.12% and 2.00%, respectively).

Although these items of evidence have not been adduced explicitly for that purpose, they may, in principle, serve to demonstrate that the earlier marks have acquired a reputation. This is because, although cancellation applicants should submit all the facts, evidence and arguments in support together with the application, pursuant to Article 16(1) EUTMDR, the cancellation applicant has until the closure of the adversarial part of the proceedings to present the facts, evidence and arguments in support of the application. Moreover, use and reputation of a trade mark are closely related. Therefore, and for the sake of completeness, the Cancellation Division will take these further items of evidence into account in relation to the assessment of the reputation of the earlier marks.

However, they cannot change the above findings.

In relation to DOCUMENTS 9 and 12, the Cancellation Division refers to its findings above in relation to DOCUMENTS 8 and 9 of the applicant’s first submissions.

DOCUMENT 10 shows Mermelada Bebé’s social media presence. However, even if the number of ‘followers’ and ‘likes’ may have increased until 2019, those numbers are still not particularly high and, as stated above, they are not representative with regard to the recognition of the earlier marks required in the present proceedings, as they do not reveal any details in relation to those followers.

Despite showing some use of the mark ‘BEBE’, DOCUMENT 11 does not reveal its degree of recognition by the relevant public, or the market share held by the earlier marks either.

The market share for the first semester of 2019 is shown in DOCUMENT 14. However, that document is of unknown origin and, therefore, has little probative value. In any case, the numbers shown in connection with ‘BEBE’ are not sufficient to immediately conclude that the mark has a reputation, or that it has been used intensively in the relevant market as, again, no information is provided on the overall market of jams and jellies in terms of absolute figures.

Finally, DOCUMENT 13 is not conclusive with regard to the marks’ recognition either.

Overall, the evidence taken as a whole contains little or no information on the extent of use of the earlier marks, on the degree of their recognition by the relevant public, their sales volumes, market share, or the extent to which the marks have been promoted, in particular, in the period extending from the filing date of the contested EUTM on 22/09/2015 to the date of filing of the invalidity application on 24/06/2019. The evidence in relation to advertisements is scarce and does not demonstrate to what extent the relevant public was exposed to the earlier marks. From the documents submitted, it is impossible to conclude that the earlier marks have acquired a reputation, and that such reputation continued to exist at the time of filing of the present application, without having to resort to assumptions and probabilities. As a result, the evidence does not prove that the trade marks are known by a significant part of the relevant public. Therefore, the applicant failed to prove that its trade marks have a reputation.

 

b) Conclusion

As seen above, for the application to be successful under Article 60(1)(a) EUTMR in conjunction with Article 8(5) EUTMR, the earlier trade mark must 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 application must be rejected insofar as it is based on these grounds.

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH 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 application is based on more than one earlier trade mark. The Cancellation Division finds it appropriate to first examine the application in relation to the applicant’s Spanish trade mark registrations No 1 023 939 and No 566 586.

 

a)  The goods

 

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

 

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

Earlier Spanish mark No 566 586:

Class 5: Dietetic products.

Earlier Spanish mark No 1 023 939:

Class 29: Jellies, jam.

The contested goods are the following: 

 

Class 5: Pharmaceutical products; dietetic food and substances adapted for medical use, food for babies; drinks for babies; infant's foods and drinks; dietary supplements for humans; food for medical purposes; dietetic substances adapted for medical use; food for babies, infants and invalids; food for babies with special nutritional needs; milks for babies and infants, in liquid and powder form; milk ferments and whey powder; dietary supplements for humans; nutritional dietary supplements for medical use; nutritional products for medical usage; vitamin waters; vitamin drinks; preparations and substances for medical purposes; food supplements not for medical use.

Class 29: Meat, fish, poultry and game; Meat extracts; Preserved, frozen, dried and cooked fruits and vegetables; Jellies, jams, compotes; Eggs; milk products; Edible oils and fats; Milk; milk powder; milk and milk powder for children.

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; cereals; cereals containing fibre; breakfast-cereals, porridge and grits; children's flour and other foodstuffs for infants and children; milk powder products, with addition of other foodstuffs or not.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

With regard to the jellies covered by earlier mark No 1 023 939 in Class 29, the Cancellation Division notes that the Spanish term for which the mark is registered, as shown in TM View and in the extracts from the database of the Spanish Patent and Trademark Office submitted by the applicant, is jaleas. Contrary to its English equivalent, jellies, this term is used only in relation to fruit jellies, whereas it does not denote jellies based on other foodstuffs, such as meat or fish jellies.

Contested goods in Class 5

The contested goods in this class are all either pharmaceuticals and other preparations and substances for medical purposes, food supplements or foodstuffs/drinks for particular dietetic or nutritional needs. Consequently, insofar as they are not identical to the dietetic products covered by earlier mark No 566 586, they are at least similar, as these goods have the same purpose, distribution channels and end users.

Contested goods in Class 29

Jellies and jams are identically covered by the contested mark and earlier mark No 1 023 939.

The contested compotes and preserved, frozen, dried and cooked fruits and vegetables are either included in jellies or jams and, therefore, identical to those goods of the earlier mark, or they are at least similar to a low degree to them, as they, at any rate, have the same producers, relevant public and distribution channels and, in some cases, also the same nature.

The remaining contested goods in this class, namely meat, fish, poultry and game, meat extracts, eggs, milk products, edible oils and fats, milk, milk powder, milk and milk powder for children, on the other hand, have no relevant points of contact under the abovementioned criteria with the applicant’s goods in Classes 5 and 29. The fact that all of these goods have a nutritional purpose is not sufficient to render them similar. The goods in question have different natures and are not likely to be manufactured by the same producers, sold through the same outlets or placed on the same shelves in supermarkets. Consequently, these goods are dissimilar.

Contested goods in Class 30

The contested honey, treacle and sauces (condiments) and jams of earlier mark No 1 023 939 have the same purpose, end users and distribution channels. Furthermore, they are in competition. Consequently, these goods are considered similar.

However, the same cannot be established with regard to the remaining contested goods coffee, tea, cocoa and artificial coffee, rice, tapioca and sago, flour and preparations made from cereals, bread, pastry and confectionery, edible ices, sugar, yeast, baking-powder, salt, mustard, vinegar, spices, ice, cereals, cereals containing fibre, breakfast cereals, porridge and grits, children's flour and other foodstuffs for infants and children, milk powder products, with addition of other foodstuffs or not. Again, the fact that all of these goods are foodstuffs is not sufficient for a finding of similarity. The goods in question have different natures and are not likely to be manufactured by the same producers, sold through the same outlets or placed on the same shelves in supermarkets. Consequently, these goods are dissimilar.

b)  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. 

  

It is apparent from the case-law that, insofar as pharmaceutical preparations, whether or not issued on prescription, are concerned, the relevant public’s degree of attention is relatively high (15/12/2010, T-331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T-288/08, Zydus, EU:T:2012:124, § 36). In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health. Consequently, the degree of attention in relation to pharmaceuticals, food supplements and foodstuffs/drinks for particular dietetic or nutritional needs, which also affect the consumers’ health, is considered to be at least higher than average.

The remaining goods found to be identical or similar to various degrees are goods for daily consumption directed at the public at large. The public’s degree of attention may vary from low to average, as the relevant goods are cheap and purchased on a regular basis.

 

c) The signs

 

1) earlier mark No 566 586:

2) earlier mark No 1 023 939: BEBE
Earlier trade marks	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, bearing in mind their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The contested sign is a figurative mark composed of the verbal element ‘RoyBébé’, depicting a crown on top of the letter ‘y’ and three signs appearing to be from a far eastern Asian language, which will not be understood by the average consumer, but rather be perceived as figurative elements.

Earlier mark No 1) is a figurative mark composed of the verbal element ‘BEBÉ’ and a figurative element above, depicting a toddler sitting in front of an oversized, open tin.

Earlier mark No 2) is the word mark ‘BEBE’.

The element ‘BEBE’ of the earlier marks, despite the absence of the accent over the final letter ‘E’ in earlier mark No 2), will be associated with ‘baby’. Bearing in mind that the relevant goods are foodstuffs, food supplements and pharmaceuticals and that they may be intended for babies, this element is, in principle, descriptive for all the goods found to be identical or similar to various degrees (10/01/2019, R 664/2018-4, RoyBébé (fig.) / Bebe et al., § 66).

However, an earlier national mark cannot be considered completely devoid of distinctive character but must be acknowledged as having a certain degree of distinctiveness (24/05/2012, C‑196/11 P, F1‑LIVE/F1, EU:C:2012:314, § 44‑47). Therefore, this element has to be considered as possessing a minimum of distinctiveness in the earlier marks, where it constitutes the only element and the only verbal element, respectively.

The figurative element of earlier mark No 1), essentially, underlines the meaning of the verbal element ‘BEBÉ’ and points to specific dietetic products covered by the mark, such as food for babies. It is, therefore, weak.

The contested sign’s verbal element, ‘RoyBébé’, taken as a whole, is meaningless in Spanish. Although it is a single verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). In the present case, also owing to the capital letter ‘B’, at least a part of the relevant public might dissect the verbal element into the words ‘Roy’ and ‘Bébé’ because it will recognise the word ‘bébé’ meaning ‘baby’, despite the accent over the first letter ‘E’. In that case, the element ‘Bébé’ is descriptive, whereas ‘Roy’ and the figurative elements, which will be perceived as a crown and Asian characters, are distinctive.

The applicant argues that the relevant public would link the element ‘Roy’ to royalty and the Spanish term for king, ‘rey’, which is almost identical to the prefix ‘Roy’ (arising from royal). However, the Cancellation Division finds the applicant’s argument farfetched and flawed. As stated by the applicant itself, the Spanish equivalents of ‘king’ and ‘royal’ are ‘rey’ and ‘real’. Therefore, it is highly unlikely that ‘Roy’ will be associated with these terms.

None of the signs has a clearly dominant (visually eye-catching) element; 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).

Visually, the signs coincide in the letters ‘BEBE’ (or BEBÉ/Bébé, respectively). However, they differ in all their remaining elements, that is, the letters ‘Roy’ placed at the beginning of the contested sign’s verbal element, as well as their figurative elements, insofar as any are present.

Considering what has been stated above in relation to the distinctiveness of the marks’ individual elements, the signs are visually similar to a low to very low degree only. 

 

Aurally, the pronunciation of the signs coincides in the phonemes ‘BEBE’, present identically in all signs. The pronunciation differs in the phonemes ‛Roy’ of the contested mark, which have no counterparts in the earlier signs. With regard to the Asian characters, as the relevant consumers will perceive them as figurative elements, they will not be pronounced.

 

It follows that the signs are aurally similar to a low degree.

 

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. If singled out, the element ‘Bébé’ is non-distinctive in the contested sign. Therefore, this coincidence between the marks at issue can merely lead to a very low degree of similarity.

For the part of the public that perceives the verbal element ‘RoyBébé’ as a whole and thus as meaningless, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, although low, the examination of likelihood of confusion will proceed.

 

d)  Distinctiveness of the earlier marks

 

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

 

According to the applicant, the earlier trade marks have  a reputation in Spain for jellies, jams and dietetic jams. 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 (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528), 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). 

The evidence submitted by the applicant to prove the reputation and highly distinctive character of the earlier trade marks has already been examined above under the grounds of Article 8(5) EUTMR. Reference is made to those findings, which are equally valid for Article 8(1)(b) EUTMR. The evidence submitted by the applicant does not demonstrate that the earlier trade marks acquired a high degree of distinctiveness through use.

 

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier marks must be seen as low for all of the goods in question. 

 

e)  Global assessment, other arguments and conclusion 

 

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (judgment of 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The goods at issue are partially identical or similar (to various degrees) and partially dissimilar. With regard to those goods which have been found dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the application must be rejected.

The signs have been found visually, aurally and conceptually similar to a low to very low degree, respectively. Although all signs evoke the same concept of a ‘baby’, insofar as the element ‘Bébé’ is singled out in the contested sign, this concept is descriptive in relation to the relevant goods and, consequently, non-distinctive in that mark.

Taking into account, moreover, that the distinctiveness of the earlier marks is low, the mere fact that the contested sign as a whole includes a word that lacks distinctive character in relation to the goods at hand (‘Bébé’) cannot lead to a finding of likelihood of confusion, even in relation to identical goods for which the consumers’ degree of attention is low. This is even more true in respect of goods which are only similar or even lowly similar, and/or for which the consumers’ degree of attention is above average to high.

The applicant refers to previous national decisions and decisions of the Office to support its arguments. However, decisions of national courts and national offices regarding conflicts between identical or similar trade marks at national level have no binding effect on the Office since the European Union trade mark regime is an autonomous system which applies independently of any national system (13/09/2010, T-292/08, Often, EU:T:2010:399). 

 

Moreover, the Office is not bound by its previous decisions either, as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the Court, which stated that it is settled case-law that the legality of decisions is to be assessed purely by reference to the EUTMR, and not Office practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

 

Even though national and previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case, particularly when the decision has been taken in the Member State that is relevant to the proceedings.

 

In the present case, the previous Office decisions referred to by the applicant are not relevant to the present proceedings, as the coincidences between those marks could not be outweighed by other, more distinctive elements of the marks. With regard to the national decisions referred to, the Cancellation Division notes that they were based on the finding that the earlier marks had acquired reputation, which is not the case in the present proceedings.

 

Moreover, while the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision. 

Therefore, the applicant’s arguments must be dismissed.

 

Considering all the above, the Cancellation Division finds that there is no likelihood of confusion on the part of the public. Therefore, the cancellation application must be rejected.

 

Given that the application is not well founded under Article 8(1) EUTMR in conjunction with Article 60(1)(a) EUTMR, there is no need to examine the evidence of use submitted by the applicant.

 

The applicant has also based its cancellation application on the following earlier Spanish trade mark registrations: 

 No 2 023 959

 No 95 916

 

Since these marks, owing to their figurative elements, are even less similar to the contested mark than the one already compared and cover a narrower scope of goods (namely jams and fruit jams, respectively), the outcome cannot be different. A fortiori, there is no likelihood of confusion for those earlier rights.

 

COSTS

 

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

 

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

 

According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein. 

 

 

The Cancellation Division

 

Carmen SÁNCHEZ PALOMARES

Natascha GALPERIN

María Belén IBARRA DE DIEGO

 

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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.