OPPOSITION No B 2 740 036

Bimbo, S.A., C/ Josep Pla, 2-B2 (Torres Diagonal Litoral), 08019, Barcelona, Spain (opponent), represented by March & Asociados, Passeig de Gràcia, 103, 7ª Planta, 08008, Barcelona, Spain (professional representative)

a g a i n s t

Wilhelm Egle GmbH, Hauptstrasse 47, 89284, Pfaffenhofen, Germany (applicant), represented by Dipl.-Ing. Dr. techn. Waldemar Leitner, Zerrennerstrasse 23-25, 75172 Pforzheim, Germany (professional representative).

On 28/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 740 036 is partially upheld, namely for the following contested goods:

Class 29: Meat and meat extracts; fish, game, poultry, sausage, ham, seafood and shellfish; processed fruits, fungi and vegetables (including nuts and pulses); ready meals, soups and broths, snacks and desserts, namely condensed tomatoes, dips, fish crackers, pollen prepared as foodstuff, snacks made of pork, soya preparations, prepared meals mainly consisting of meet, fish, seafood or vegetables, snacks and side dishes made from potatoes, soups and preparations therefor, stews, stocks and broths, yucca chips; eggs.

Class 30: Ready meals and savoury snacks, namely snacks based on corn, cereals, flour and sesame, biscuits and crackers, dumplings, pancakes, pasta, rice and cereal foodstuffs, pasties and farinaceous foods, spring rolls and seaweed rolls, tortilla foodstuffs; salts, seasonings, flavourings and condiments; baked goods, confectionery, chocolate and desserts; sugar, natural sweeteners; honey; sweet glazes and fillings and bee products for food; ice, ice creams, frozen yogurts and sorbets; coffee, teas and cocoa and substitutes therefor; processed grains, starches, and goods made thereof, baking preparations and yeasts; flour and preparations made from cereals; salt, mustard; vinegar, sauces (condiments); spices; ice.

2. European Union trade mark application No 14 981 922 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 of European Union trade mark application No 14 981 922 for the word mark ‘Egle’, namely against all the goods in Classes 29 and 30. The opposition is based on, inter alia, Spanish trade mark registration No 3 093 785 for the word mark ‘EAGLE’. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

SUBSTANTIATION

According to Article 76(1) EUTMR (in the version in force at the time of commencement of the adversarial part, now Article 95(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 is restricted in this examination to the facts, evidence and arguments submitted 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 (in the version in force at the time of commencement of the adversarial part), the Office will give the opposing party the opportunity to submit 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 (in the version in force at the time of commencement of the adversarial part), within the period referred to above, the opposing party must also file evidence 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.

The applicant pointed out in its submission of 27/02/2018 that the opponent did not file any evidence with regard to the existence and validity of its earlier marks within the period specified by Rule 19(2) EUTMIR above.

The Opposition Division points out that on the day the opposition was filed (22/07/2016) the opponent submitted appropriate evidence obtained from the Sitadex database of the Spanish Trademark Office (‘OEPM’) concerning the earlier marks, together with an English translation of the same.

The evidence above is sufficient to substantiate the opponent’s trade marks mentioned in the notice of opposition, because the database is of an official nature and the extracts contain all the necessary elements, including the registration dates and scope of protection of the earlier marks.

The applicant’s claim that the opponent failed to substantiate the earlier marks on which the opposition is based must therefore be rejected as unfounded.

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 Spanish trade mark registration No 3 093 785 for the word mark ‘EAGLE’.

a) The goods

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

Class 29: Ready to eat snack foods consisting primarily of potatoes, nuts, nut products, roasted nuts, shelled nuts, spiced nuts, salted nuts, prepared nuts, edible nuts, fruits or other vegetable materials or combinations thereof including chipped potatoes, fruit chips, fruit-based snack foods, veal-based snack foods, soy-based snacks.

Class 30: Coffee, cocoa and artificial coffee, rice, tapioca and sago, flour and preparations made with cereals, bread, pastry and confectionary products, ice-creams, honey, golden syrup; yeast, baking powder; salt; mustard; vinegar, sauces (condiments); spices; ice; ready to eat snack foods consisting primarily of grains, corn, cereals, tortilla chips, pita chips, rice chips, rice cakes, rice crackers, salted biscuits, puffed snacks, popcorn, sweet flavoured popcorn and sweet peanuts; food mixtures consisting of cereal flakes and dried fruits; snack food dipping sauces, sauces, snack bars.

Class 31: Nuts, nuts raw fresh nuts.

The contested goods are the following:

Class 29: Meat and meat extracts; fish, game, poultry, sausage, ham, seafood and shellfish; birds eggs and egg products; oils and fats, in particular edible oils and lard of plant origin; processed fruits, fungi and vegetables (including nuts and pulses); ready meals, soups and broths, snacks and desserts, namely birds' nests and casseroles, condensed tomatoes, dips, fish crackers, pollen prepared as foodstuff, snacks made of pork, soya preparations, prepared meals mainly consisting of meet, fish, seafood or vegetables, snacks and side dishes made from potatoes, soups and preparations therefor, stews, stocks and broths, yucca chips; gelatine [jellies]; jams, compotes; eggs.

Class 30: Ready meals and savoury snacks, namely snacks based on corn, cereals, flour and sesame, biscuits and crackers, dumplings, pancakes, pasta, rice and cereal foodstuffs, pasties and farinaceous foods, spring rolls and seaweed rolls, tortilla foodstuffs; salts, seasonings, flavourings and condiments; baked goods, confectionery, chocolate and desserts; sugar, natural sweeteners; honey; sweet glazes and fillings and bee products for food; ice, ice creams, frozen yogurts and sorbets; coffee, teas and cocoa and substitutes therefor; processed grains, starches, and goods made thereof, baking preparations and yeasts; flour and preparations made from cereals; salt, mustard; vinegar, sauces (condiments); spices; ice.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The terms ‘in particular’, ‘primarily’, ‘including’, used in the applicant’s and opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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.

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 29

The contested snacks made of pork are included in the broad category of the opponent’s ready to eat snack foods. Therefore, they are identical.

The contested snacks and side dishes made from potatoes, soups and preparations therefor overlap with the opponent’s ready to eat snack foods consisting primarily of potatoes. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested meat and meat extracts; fish, game, poultry, sausage, ham, seafood and shellfish; processed fruits, fungi and vegetables (including nuts and pulses); fish crackers, soya preparations, prepared meals mainly consisting of meet, fish, seafood or vegetables, stews, stocks and broths, yucca chips; eggs are at least similar to the opponent’s ready to eat snack foods since they have the same purpose and method of use. Furthermore, they are in competition, target the same public and are often found in the same sections of supermarkets.

The contested pollen prepared as foodstuff is similar to the opponent’s honey in Class 30. They coincide in producer, relevant public and distribution channels.

The contested condensed tomatoes, dips are at least similar to the opponent’s sauces in Class 30. They coincide in their purpose (seasoning for food) and can be produced by the same provider, sold through the same channels of distribution and target the same relevant public. They may be also in competition.

However, there is no similarity between the contested birds eggs and egg products; oils and fats, in particular edible oils and lard of plant origin; birds' nests and casseroles, gelatine [jellies]; jams, compotes and the opponent´s goods in Classes 29, 30 and 31. Although they are all foodstuffs that are sold (mostly) through the same distribution channels to the public at large, this is not enough to establish similarity, since they are generally displayed in different areas or on different shelves in supermarkets and department stores and the producers are not usually the same. These goods are neither complementary to nor in competition with each other. Consequently, they are dissimilar.

Contested goods in Class 30

Salts, condiments; confectionery, honey, ice creams, coffee, cocoa, baking preparations and yeasts; flour and preparations made from cereals; salt, mustard; vinegar, sauces (condiments); spices; ice (listed twice) are identically contained in both lists of goods (including synonyms).

The contested snacks based on corn, cereals, flour and sesame are included in the broad category of the opponent’s ready to eat snack foods consisting primarily of grains, corn, cereals. Therefore, they are identical.

The contested seasonings include, as a broader category, or overlap with, the opponent’s salt. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested baked goods include, as a broader category, or overlap with, the opponent’s bread. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested chocolate is included in the broad category of, or overlap with, the opponent’s confectionery. Therefore, they are identical.

The contested biscuits and crackers, dumplings, pancakes, pasta, rice and cereal foodstuffs, pasties and farinaceous foods, spring rolls and seaweed rolls, tortilla foodstuffs; processed grains, starches, and goods made thereof are at least similar to a low degree to the opponent’s flour and preparations made with cereals. These goods have the same or a similar nature and purpose. They also target the same public and can coincide in their pertinent distribution channels and producers.

The contested flavourings are similar to the opponent’s spices. They have the same purpose. They also coincide in their producer, relevant public and method of use.

The contested desserts are at least similar to the opponent’s confectionery. They are in competition and can coincide in distribution channels and consumers. Moreover, it is common to use the same trade marks for confectionery and, inter alia, ice cream products simultaneously, for instance by offering a similar confectionery product in frozen form.

The contested sugar, natural sweeteners; sweet glazes and fillings and bee products for food are at least similar to the opponent’s honey. These goods coincide in their relevant public and distribution channels. Furthermore, they are in competition.

The contested frozen yogurts and sorbets are at least similar to the opponent's ice-creams. They may have the same methods of use and distribution channels. Furthermore, they may target the same public and be in competition with each other.

The contested teas and substitutes therefor are at least similar to the opponent’s coffee. They have the same method of use and are sold in the same sections of outlets. They are in competition and target the same public.

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.

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

c) The signs

EAGLE	Egle
Earlier trade mark	Contested sign

The relevant territory is Spain.

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

The verbal elements ‘EAGLE’ and ‘Egle’ of the earlier mark and of the contested sign, respectively, coincide almost entirely. Contrary to the applicant’s submission, none of them would be understood by the relevant public. Therefore they are distinctive.

Both signs are word marks which are protected as such, independently of the typeface used, and by definition have no elements that could be regarded as more dominant than any others. Therefore, it is irrelevant whether the signs are presented in upper or lower case characters.

Visually and aurally, the signs coincide in the letters ‘E*GLE’, placed in the same order, which constitute the entire contested sign, ‘Egle’, and four out of the five letters of the earlier mark, ‘EAGLE’. However, they differ in the additional letters/sounds ‘A’ in the middle of the earlier mark, which could easily be overlooked by consumers, as consumers tend to pay much less attention to letters that appear in the middle of signs.

Therefore, the signs are visually and aurally highly similar.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, 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, the examination of likelihood of confusion will proceed.

d) 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 is well known and has a reputation in Spain in connection with all the goods for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted evidence to support this claim. As the opponent requested that certain commercial data contained in the evidence be kept confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

On 22/07/2016, together with the notice of opposition, the opponent submitted the following evidence:

 Annex 2: certificate attesting advertising expenditures made by the opponent in relation to the trademark ‘BIMBO’ for the period 2010-2015; certificate issued by Finance Vice-President of the opponent on 8 March 2016 stating the estimated value of the trade mark BIMBO; list of brands qualified as ‘SUPERBRANDS’ in 2016 which includes ‘BIMBO’; certificates issued by the Chambers of Commerce in Madrid and Barcelona in December 2013 declaring that the sign used by the opponent is well known in the food sector.

 Annex 3: print-outs of Google search results for the words ‘EAGLE’ peanuts and snacks, dated 15/09/2011 which returned 2 000 000 entries, submitted as evidence of the general awareness of the trade mark. Together with these documents the opponent filed extracts of its website in which ‘EAGLE’ products appear.

 Annex 4: advertising brochure of an important supermarket chain in Spain showing ‘EAGLE’ products. An article of the specialised publication ‘ALIMARKET’ dated 19/06/2014 was also enclosed giving account of the launch of a new product bearing the trade mark ‘EAGLE’. Only the heading of the article was translated. Finally extracts of market surveys concerning the trade mark ‘BIMBO’ were also filed.

 Annex 5: an invoice from a communication company for services of restyling one of the packaging of an ‘EAGLE’ product. The invoice however is almost illegible and no date can be seen on it. In this Annex some (undated) pictures of sales points of ‘BIMBO’ and ‘EAGLE’ products were also provided.

Later on in course of the proceedings, on 04/05/2018 i.e. outside the substantiation period, the opponent submitted further evidence aimed at showing that ‘the trademark "EAGLE" in 2018 is still a well-known trademark’. This additional evidence was submitted after the substantiation time limit and therefore it cannot be taken into account for the purposes of the present assessment, pursuant to Rules 19(4) and 20 (1) EUTMIR (in the version in force at the time of commencement of the adversarial part).

Having examined the material above filed on time, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

Even assessed in combination, the documents do not provide the Opposition Division with sufficient information concerning the mark's recognition on the market. Most of the evidence is irrelevant since it concerns the trade mark ‘BIMBO’, not the opposing sign. The rest provides very little information about the sales volumes, the market share of the trade mark or the extent to which the trade mark has been promoted or the awareness of the mark. As a result, the evidence does not show the degree of recognition of the trade mark by the relevant public. The opponent could have filed more supporting documentation, for example, verified or verifiable data as to the market share held by the opposing sign, opinion polls and market surveys about the same, certifications and awards, invoices and other commercial documents, audits and inspections, etc. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation, and therefore this evidence cannot support the opponent's argumentation on the enhanced distinctiveness of the earlier mark.

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.

e) Global assessment, other arguments and conclusion

The contested goods are partly identical, party similar to varying degree and partly dissimilar to the opponent’s goods. The relevant public’s degree of attention is average. The distinctiveness of the earlier mark is normal. The signs are visually and aurally highly similar insofar as the contested sign, ‘Egle’, is completely included in the earlier mark, ‘EAGLE’. Moreover the marks under comparison lack any concepts in the relevant territory that could help consumers to differentiate between them.

The differences, which arise from the additional letter ‘A’ in the earlier mark ‘EAGLE’, have a marginal impact on the global impression created by the signs, for the reasons explained above in section c) of this decision.

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 (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Taking all the above into account, the Opposition Division considers that the differences between the signs are not sufficient to counterbalance the degree of similarity between them from the visual and aural perspectives or to exclude a likelihood of confusion. Therefore, the relevant public, when encountering the signs in relation to identical or similar goods, is likely to think that they come from the same undertaking or, as the case may be, from economically linked undertakings.

This is also true for the contested goods which have been found to be similar to a low degree to the earlier goods. In this regard, it should be mentioned that a lesser degree of similarity between the goods and/or services may be offset by a greater degree of similarity between the signs and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17). Therefore the similarity between the signs is sufficient to offset the low similarity of some of the goods and to find a likelihood of confusion on the part of the public with regard to these as well.

The applicant refers to previous decisions of the Office to support its arguments. However, 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).

In the present case, the previous decision of the First Board of Appeal of 12 November 2013 in case R 1610/2012-1 (FAST / FAUST) referred to by the applicant is not relevant to the present proceedings. In that case the relevant public’s higher degree of attention and the conceptual differences between the signs were crucial factors in reaching the conclusion that there was no likelihood of confusion between the conflicting marks. However, in the present case the degree of attention displayed by the relevant public is average and the signs lack any concepts in the relevant territory that could help consumers to differentiate between them.

In view of the above, it follows that this argument of the applicant is set aside as unfounded.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to varying degrees 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 mark:

- Spanish trade mark registration No 3 581 950 for the figurative mark

The other earlier right invoked by the opponent is less similar to the contested mark. This is because it contains further figurative elements, such as the eagle’s head within the letter ‘G’, which is not present in the contested trade mark. Moreover, it covers the same or a narrower scope of the goods. 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.

The examination of the opposition will now proceed further based on the other ground claimed by the opponent, namely Article 8(5) EUTMR.

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 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.

Therefore, the grounds for 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: 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.

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

a) Reputation of the earlier trade mark

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

It was concluded that the evidence furnished by the opponent provided no information on the degree of recognition of the earlier mark and therefore the opponent failed to prove that its trade mark has a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) 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 for only some 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

Andrea VALISA

Riccardo RAPONI

Valeria ANCHINI

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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.