OPPOSITION No B 2 685 637

Nichols PLC, Laurel House, 3 Woodlands Park, Ashton Road, Newton-Le-Willows WA12 OHH, United Kingdom (opponent), represented by Groom Wilkes & Wright Llp, The Haybarn, Upton End Farm Business Park, Meppershall Road, Shillington, Hitchin, Hertfordshire SG5 3PF, United Kingdom (professional representative)

a g a i n s t

Guangzhou GuangZheTian Food Co., Ltd., R301, 3F, No.109, He Dong Rd., Guangzhou, Guangdong, Peoples’ Republic of China (applicant), represented by Nextmarq, 1 Rue Chabrier, 13100 Aix-en-Provence, France (professional representative)

On 25/04/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 685 637 is partially upheld, namely for the following contested goods:

Class 30: Cocoa-based beverages; coffee; tea.

Class 32: Beer; waters [beverages]; fruit juices; beverages (non- alcoholic -); beverages (preparations for making -); vegetable juices [beverages]; smoothies; sherbets [beverages]; milk (peanut -) [non-alcoholic beverage]; soya- based beverages, other than milk substitutes.

2. European Union trade mark application No 14 971 816 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 971 816, namely against all the goods in Classes 30 and 32 and some of the services in Class 35. The opposition is based on the following earlier rights and grounds:

	Earlier right	Representation	Grounds
1)	UK trade mark No 1 075 980	PANDA	8(1)(b), 8(5) EUTMR
2)	UK trade mark No 697 774	Panda	8(1)(b), 8(5) EUTMR
3)	UK trade mark No 3 040 059	PANDA SPLASH	8(1)(b) EUTMR
4)	UK trade mark No 3 045 420		8(1)(b) EUTMR
5)	IE trade mark No 120 585	PANDA	8(1)(b) EUTMR
6)	FR trade mark No 1 697 872	PANDA	8(1)(b) EUTMR
7)	UK non-registered mark	PANDA	8(4) EUTMR

1. SUBSTANTIATION

The opponent invoked Article 8(5) EUTMR in relation to earlier UK trade marks No 697 774 and No 1 075 980. It invoked Article 8(4) EUTMR in relation to UK non-registered mark ‘PANDA’.

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 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 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.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that 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.

In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark or evidence of use regarding the non- registered trade mark.

On 19/04/2016 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit was extended and expired on 24/10/2016.

The opponent did not submit any evidence concerning the reputation of the earlier UK trade marks No 697 774 and No 1 075 980 or evidence of use in the course of trade of the earlier non‑registered sign ‘PANDA’.

Given that one of the necessary requirements of Article 8(5) EUTMR and of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

2. 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 UK trade mark No 1 075 980.

1. The goods and services

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

Class 32: Non-alcoholic drinks and preparations for making such drinks, all included in Class 32; fruit juices and vegetable juices, all for use as beverages; and beverages included in Class 32 containing not more than 2 (by volume) of alcohol.

The contested goods and services are the following:

Class 30: Cocoa-based beverages; candy; fruit jellies [confectionery]; pastries; cereal-based snack food; coffee; tea; biscuits; rice-based snack food; ice cream.

Class 32: Beer; waters [beverages]; fruit juices; beverages (non- alcoholic -); beverages (preparations for making -); vegetable juices [beverages]; smoothies; sherbets [beverages]; milk (peanut -) [non-alcoholic beverage]; soya- based beverages, other than milk substitutes.

Class 35: Communication media (presentation of goods on -), for retail purposes; retail or wholesale services for pharmaceutical, and medical supplies.

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.

Contested goods in Class 30

The contested cocoa-based beverages; coffee; tea are similar to the opponent’s non-alcoholic drinks in Class 32 as they can coincide in producer, end user and distribution channels. Furthermore they are in competition.

The contested candy; fruit jellies [confectionery]; pastries; cereal-based snack food; biscuits; rice-based snack food; ice cream are confectionery, baked goods and snacks. They have a different nature and purpose from the opponent’s goods in Class 32, which are all drinks or preparations for making drinks. Moreover, they are neither complementary nor in competition, and do not have the same distribution channels, end users or usual origin. Therefore, these goods are dissimilar.

Contested goods in Class 32

Fruit juices; beverages (non- alcoholic -); beverages (preparations for making -); vegetable juices [beverages] are identically contained in both lists of goods (including synonyms).

The contested waters [beverages]; smoothies; sherbets [beverages]; milk (peanut -) [non-alcoholic beverage]; soya- based beverages, other than milk substitutes fall under the broad category of the opponent’s broad category of non-alcoholic drinks. Therefore, these goods are identical.

The contested beer overlaps with the opponent’s beverages included in Class 32 containing not more than 2 (by volume) of alcohol. Therefore, these goods are identical.

Contested services in Class 35

The contested retail or wholesale services of pharmaceutical and medical supplies and the opponent’s goods in Class 32 are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are dissimilar.

Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.

Advertising services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Therefore, the contested communication media (presentation of goods on -), for retail purposes, which falls under advertising services is dissimilar to the goods or services being advertised.

2. Relevant public — degree of attention

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

In the present case, the goods found to be identical or similar are directed at the public at large. The degree of attention is below average, due to price and the frequent purchase.

3. The signs

PANDA
Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

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

The earlier sign is the word mark ‘PANDA’ and will be understood as a kind of a bear. The contested sign depicts the face of a panda bear and will be immediately perceived as this kind of bear. Both marks are distinctive.

None of the signs has an element that could be considered clearly more distinctive or dominant (eye-catching) than other elements.

As the signs do not visually coincide in any element, it is concluded that the signs are not visually similar.

Purely figurative signs are not subject to a phonetic assessment. As one of the signs is purely figurative, it is not possible to compare them aurally.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with the same distinctive concept, namely a panda bear, the signs are conceptually identical.

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

4. Distinctiveness of the earlier mark

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

The opponent claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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

5. Global assessment, other arguments and conclusion

The goods of the opposing signs are partly identical, partly similar and partly dissimilar. The earlier mark has an average degree of distinctiveness. The degree of attention of the relevant public is below average.

The signs are not visually similar and cannot be compared phonetically. However, they are conceptually identical, as they will both immediately be perceived with the distinctive concept of a panda bear. There are no elements of the signs which refer to a different concept or could otherwise help to differentiate them.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s United Kingdom trade mark No 1 075 980.

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 and services 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:

	Earlier right	Representation
2)	United Kingdom trade mark No 697 774	Panda (word mark)
3)	United Kingdom trade mark No 3 040 059	PANDA SPLASH (word mark)
4)	United Kingdom trade mark No 3 045 420
5)	Irish trade mark No 120 585	PANDA (word mark)
6)	French trade mark No 1 697 872	PANDA (word mark)

The earlier marks 2), 5) and 6) are identical to the one which has been compared. The other earlier rights 3) and 4) are less similar to the contested mark as they contain the additional words ‘SPLASH’ or ‘refreshingly fruity fun’ and earlier right 4) is depicted in another typeface. These elements are not present in the contested trade mark.

All earlier rights cover the same or a narrower scope of goods, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Octavio MONGE GONZALVO

Julia SCHRADER

Swetlana BRAUN

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.