OPPOSITION No B 2 716 119

Voima Ltd, Landstrasse 11, 9495, Triesen, Liechtenstein (opponent), represented by Murgitroyd & Company, Scotland House, 165-169 Scotland Street, Glasgow G5 8PL, United Kingdom (professional representative)

a g a i n s t

AGUS Sp. z o.o., Pl. Piłsudskiego 3, 00-078 Warsaw, Poland (applicant), represented by Kulikowska & Kulikowski SP.J., ul. Nowogrodzka 47A, 00-695 Warsaw, Poland (professional representative).

On 19/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 716 119 is partly upheld, namely for the following goods in Class 30:

Coffee, vegetal preparations for use as coffee substitutes, tea, cocoa; chocolate-based and cocoa-based beverages; ice beverages with a coffee base, chocolates or cocoa, coffee beverages with or without milk, chocolate beverages with or without milk.

2. European Union trade mark application No 15 016 801 is rejected for all the above goods. It may proceed for the remaining goods.

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 15 016 801 (word mark: ‘Crocodile’), namely against all the – remaining – goods in Class 30 (following a partial refusal of the contested sign in parallel opposition 04/06/2018, B 2 711 862, and given that the opponent maintained its opposition). The opposition is based on the following earlier trade marks:

1. European Union trade mark registration No 4 374 898 (figurative mark:
   ‘ ’) for goods in Classes 32 and 33;

2. European Union trade mark registration No 12 858 155 (figurative mark:
   ‘ ’ for goods in Classes 32 and 33;

3. European Union trade mark registration No 2 845 725 (word mark: ‘MAD CROC’) for goods in Class 32;

4. International trade mark registration No 986 493 (figurative mark:
   ‘ ’) designating the European Union and Croatia for goods in Classes 5, 16, 29, 30, 32 and 33;

5. International trade mark registration No 986 492 (word mark: ‘MAD-CROC’) designating the European Union and Croatia for goods in Classes 5, 16, 29, 30, 32 and 33;

6. International trade mark registration No 872 639 (figurative mark:
   ‘ ’) designating Romania and Bulgaria for goods in Classes 32 and 33;

7. Czech Republic trade mark registration No 259 879 (word mark: ‘MAD CROC’) for goods in Classes 25, 32 and 33;

8. United Kingdom trade mark registration No 2 310 182 (word mark: ‘MAD CROC’) for goods in Class 32.

The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

SUBSTANTIATION of Czech Republic trade mark registration No 259 879 (No 7)

According to 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 Article 7(1) EUTMDR, 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 Article 7(2) EUTMDR, 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.

In particular, if the opposition is based on a registered trade mark that is not a European Union trade mark, the opposing party must submit a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in Article 7(1) EUTMDR and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Article 7(2)(a)(ii) EUTMDR. Where the evidence concerning the registration of the trade mark is accessible online from a source recognised by the Office, the opposing party may provide such evidence by making reference to that source — Article 7(3) EUTMDR.

According to Article 7(4) EUTMDR, any filing, registration or renewal certificates or equivalent documents referred to in Article 7(2)(a), (d) or (e) EUTMDR, including evidence accessible online as referred to in Article 7(3) EUTMDR must be in the language of the proceedings or accompanied by a translation into that language. The translation must be submitted by the opposing party of its own motion within the time limit specified for submitting the original document.

According to Article 25(1) EUTMIR, when a translation of a document is to be filed, the translation must identify the document to which it refers and reproduce the structure and contents of the original document. Furthermore, according to the same provision, where a party has indicated that only parts of the document are relevant, the translation may be limited to those parts.

In the present case, the evidence filed by the opponent is not sufficient to substantiate its earlier trade mark, because the renewal certificate is not translated into the language of the proceedings. This certificate contains neither the goods and services nor INID codes and is therefore not sufficient as evidence without a translation.

According to Rule 20(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), if until expiry of the period referred to in Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

Preliminary remark

The opposition was based on, inter alia, the abovementioned trade marks (Nos 1, 3, 4, 5, 6 and 8), which have a broader scope of protection than trade mark No 2 as regards the goods, and which are included in the request for proof of use (whilst trade mark No 2 is not subject to the request for proof of use but has a comparatively more restricted list of goods). However, since only the goods for which proof of use has been demonstrated can be taken into account, the evidence for proof of use must first be checked. The examination will then continue based on the signs that have the broadest scope of protection.

The applicant requested that the opponent submit proof of use of all the trade marks on which the opposition is based. The date of filing of the contested trade mark is 19/01/2016.

However, European Union trade mark registration No 12 858 155, (No 2), was registered on 30/09/2014. Therefore, the request for proof of use is inadmissible.

The opponent was therefore required to prove that the remaining earlier trade marks on which the opposition is based were put to genuine use in the European Union, Bulgaria, Croatia, Romania and the United Kingdom from 19/01/2011 to 18/01/2016 inclusive.

The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely the following:

European Union trade mark registration No 4 374 898 (‘ ’)

Class 32: Beers; beverages; mineral and aerated waters; fruit drinks and fruit juices; energy drinks; frozen concentrated fruit juice drinks; carbonated drinks; concentrates and preparations for use in making all the aforesaid beverages.

Class 33: Alcoholic beverages; alcoholic drink preparations; alcoholic extracts; alcoholic beverages containing not more than 12% of alcohol by volume; alcoholic drink preparations containing not more than 12% of alcohol by volume.

European Union trade mark registration No 2 845 725 (‘MAD CROC’)

Class 32: Energy drinks, carbonated drinks, soft drinks, non-alcoholic beverages; sports drinks; mineral and aerated water; fruit juices, fruit drinks, syrups and other preparations for making beverages; beers.

International trade mark registrations No 986 492 ‘MAD-CROC’ and No 986 493
(‘ ’)

Class 5: Dietetic substances adapted for medical use; dietetic foodstuffs and nutritional supplements adapted for medical use; medicated beverages; preparations for making beverages for medical use; vitamin preparations; mineral preparations; mineral preparations for dietary foodstuffs; vitamin bars; medicated chewing gum; impregnated dissolvable strips for use as a stimulant adapted for medical use; energy boosting gum for use as a dietary supplement adapted for medical use; chews enhanced with caffeine and vitamins for use as a dietary supplement adapted for medical use; chewing gum enhanced with caffeine and vitamins for use as a dietary supplement adapted for medical use.

Class 16: Printed matter; printed publications; magazines; books; paper, cardboard, paper articles, cardboard articles; photographs; stationery; writing instruments; instructional and teaching material; greeting cards; decalcomanias; stickers; posters; calendars; prints.

Class 29: Meat, fish, poultry and game; meat products, fish products; liver pâté; preserved, dried, cooked, canned and frozen fruits, vegetables, pulses, meat, meat products, fish and fish products; soups; dairy products and substitutes therefor; milk products and substitutes therefor; eggs; yoghurts; cheese and substitutes therefor; milk drinks; milk substitutes for beverages; milkshakes being beverages predominantly of milk; beverages made from milk substitutes; powdered milk for making beverages; powdered milk or milk substitutes; jams, marmalade, preserves; conserves; peanut butter; meat, fish, fruit, vegetable, savoury, sweet and sandwich spreads; edible oils and edible fats; pickles; piccalilli; jellies; jelly crystals; mincemeat; fruit curds; fruit desserts; fruit salads; candied and uncandied peel; bottled fruits; fish, meat and vegetable pastes; prepared meals, snack foods; canned milk based desserts; myco-protein for food for human consumption; savouries consisting of or containing myco-protein; desserts; dairy desserts; desserts and dairy desserts made from milk substitutes; dessert toppings mainly consisting of nuts; dietetic and slimming foodstuffs and substitutes; crisps; nuts, mixtures of nuts and dried fruit, also with added corn and products made from corn, chips; blancmange.

Class 30: Flavourings and seasonings; herbal flavourings for making beverages; flavourings for beverages; coffee, mixtures of coffee and chicory, coffee essences, coffee extracts, artificial coffee, coffee preparations; drinks containing coffee; chicory and chicory mixtures, all for use as substitutes for coffee; tea, black tea, green tea, herbal tea, tea essences, tea extracts, instant tea, tea mixtures; fruit tea, fruit and herbal flavoured tea; infusions for making beverages; cocoa, cocoa products, cocoa powder, drinking chocolate, beverages made from or containing chocolate; beverages made from or containing cocoa; preparations for making chocolate or cocoa based drinks; custard; custard powder; baking powder; flour; preparations made from flour; bran preparations, wheat germ, yeast; rusks; cereals and preparations made from cereals; bread, bread products, pastry; bakery products; pastry products; farinaceous products and preparations; macaroni; vermicelli; spaghetti; pasta; pasta sauces; noodles; pizzas; pastries and confectionery; tarts; biscuits; cookies; cakes; chocolate; chocolate products; chocolate bars; spices; sugar, rice, tapioca, sago; syrup; honey and honey substitutes; treacle; chocolate spread; salt; mustard; pepper; vinegar; sauces; desserts; puddings; dessert toppings mainly consisting of chocolate or sugar confectionery; pudding toppings in the form of sauces; ice cream and ice cream confections; water ices; frozen ices; frozen confections; lollipops; pies; curry powder; curry paste; mayonnaise, yeast extracts; salad dressings; prepared meals, snack foods and sandwiches; chutneys, sauces and salad cream; preserved ginger; mixes for cheese sauce, mixes for white sauce, mixes for sauces, mixes for cakes, mixes for bread and pizza dough, mixes for cookies, mixes for muffins, mixes for doughnuts; dietetic foodstuffs and beverages; slimming foodstuffs and beverages; cereal bars; cereal based food bars and cake bars; prepared rice dishes, prepared pasta dishes; mousse confections; pretzels, crisps made of cereals; chewing gum; chews in the nature of candy; frozen yoghurt.

Class 32: Beers; beverages; mineral and aerated waters; fruit drinks and fruit juices; energy drinks; frozen concentrated fruit drinks; part-frozen slush drinks; frozen carbonated beverages; carbonated drinks; concentrates and preparations for use in making all the aforesaid beverages.

Class 33: Alcoholic beverages.

International trade mark registration No 872 639 (‘ ’)

Class 32: Beers; beverages; mineral and aerated waters; fruit drinks and fruit juices; energy drinks; frozen concentrated fruit drinks; carbonated drinks; concentrates and preparations for use in making all the aforesaid beverages.

Class 33: Alcoholic beverages; alcoholic drink preparations; alcoholic extracts; alcoholic beverages containing not more than 1.2% of alcohol by volume; alcoholic drink preparations containing not more than 1.2% of alcohol by volume.

United Kingdom trade mark registration No 2 310 182 (‘MAD CROC’)

Class 32: Beers; beverages; mineral and aerated waters; fruit drinks and fruit juices; energy drinks; frozen concentrated fruit drinks; carbonated drinks; concentrates and preparations for use in making all the aforesaid beverages.

Class 33: Alcoholic beverages; alcoholic drink preparations; alcoholic extracts; alcoholic beverages containing not more than 1.2% of alcohol by volume; alcoholic drink preparations containing not more than 1.2% of alcohol by volume.

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 07/03/2017, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 07/05/2017 to submit evidence of use of the earlier trade marks. This time limit was extended until 07/07/2017 (see the Office’s letter of 26/04/2017). On 06/07/2017, within the time limit, the opponent submitted evidence of use.

The opponent requested that certain commercial data contained in two annexes to the evidence (AK 18 and AK 19) be kept confidential vis-à-vis third parties. However, since no reasons were given for this, this request cannot be accepted. Nonetheless, the Office will only describe this information generally, out of consideration for the opponent.

The evidence to be taken into account for all the abovementioned earlier trade marks is the following.

• Witness statement of the person responsible for all of the opponent’s commercial and intellectual property matters, dated 21/07/2016, stating, inter alia, that alcoholic beverages have been sold in the EU since at least 2006 under the ‘CROC-TAIL’ mark. The following information is based on AK 1-11 attached to the statement:

• AK 1 (undated), entitled ‘Forecast for future SOK orders, Delivery at the destination Pallets/Item’, is unclear. There is no reference to any particular goods, trade mark, or the period from which it dates.

• Advertising materials, dated from 2007, or undated, with English and Finnish texts, bearing the ‘CROCK-Tail’ trade mark and showing bottles and cans of alcoholic beverages, on which the signs are depicted. It is not clear where — or if — they have been published (AK 2).

• Various invoices by ‘Energy Brands Limited’ and ‘Ultra Premium Brands Limited’, dated during the relevant period, addressed to companies in the Netherlands and Finland, and indicating the signs ‘CROCK TAIL’ (for alcoholic (mixed) beverages) and ‘Mad-Croc’ (for various (energy) drinks) (AK 3).

• Letters from the opponent, dated 2006 and 2012, stating that ‘Energy Brands Limited’ and ‘Ultra Premium Brands Limited’ have consent to use ‘CROCK TAIL’ on behalf of the opponent (AK 4).

• Invoices and photographs of table-top cooler displays for ‘CROCK TAIL’ alcoholic beverages. It is stated that these are displayed in retail stores and restaurants in Finland (AK 5).

• An invoice for a television campaign by the opponent on Finnish TV in 2014 for ‘CROCK TAIL’ (AK 6 and AK 7).

• AK 8 is in Finnish. According to the opponent, it is an agreement with Finnish TV for ‘CROCK TAIL’ to be featured on the Finnish ‘Big Brother 2014’ television programme, at a cost of EUR 30 000. The advertising campaign ran every evening.

• Advertising in Finland for ‘CROCK TAIL’ cans in print media, undated. According to the opponent, it is from May 2014 (AK 9);

• Sales information regarding the number of boxes of cans sold in Finland during 2007, 2008 and 2009 (AK 10);

• A letter, dated 31/05/2012, from the opponent to DIS B.V. in the Netherlands regarding consent to use the ‘CROCK TAIL’ mark on behalf of the opponent (AK 11).

Further material submitted, which is not part of the abovementioned witness statement, is as follows:

• An article from a Finnish website, dated 01/11/2016, in Finnish. According to the opponent, it features the person responsible for all commercial and intellectual property matters of the opponent and its energy drink business (AK 12).

• Presentations of ‘MAD CROC’ energy drinks on two websites (AK 13 and AK 14).

• AK 15 is in Finnish. According to the opponent, this concerns a 5-year importer/distribution agreement with the Finnish company ‘Olvi Oyj’ for ‘Mad-Croc’, ‘Red Devil’ and ‘Croc-Tail’ energy drinks in 2009.

• Two webpages showing how the sign ‘Mad-Croc’ is presented in Finland and in Hongkong (AK 16, AK 17).

• Various invoices for sales to a Finnish distributor. The most recent one is dated 20/05/2016 (AK 18).

• AK 19 is undated and unclear. Although it shows future orders, there is no reference to any particular product, trade mark or the period, from which they date.

• AK 20 contains four undated pictures of the packaging of ‘MAD CROCK’ energy gums and wine gums;

• An internal note, dated 20/03/2015, from DIS B.V, (a contracted company for ‘MAD CROC’ energy drinks) about distribution methods for ‘MAD-CROC’ energy drinks (AK 21);

• Information regarding the quantities of ‘MAD CROC’ and ‘CROC TAIL’ delivered to Inex partners in Finland in 2016, dated 30/12/2016 (AK 22);

• Various invoices for the sales of different alcoholic and non-alcoholic drinks in Finland. The most recent one is dated 30/09/2016 (AK 23).

Other material submitted, which is listed separately:

• ‘MAD CROC’ as a sponsor (in Finland) for different sport events (Appendices 1 and 2);

• offers of ‘MAD CROC’ energy drinks and associated products online and promotional activities related thereto (Appendices 3 and 4).

As far as the witness statement is concerned, Article 10(4) EUTMDR (former Rule 22(4) EUTMIR, in force before 01/10/2017) expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources. Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

The following documents cannot be considered since they either concern dates outside the period to be assessed, or are undated: AK 1, AK 2, AK 10, AK 12, AK 18, AK 19, AK 20, AK 23.

Other documents do not provide any information regarding the extent of use of the marks and are, therefore, only of very limited significance, namely AK 4, AK 5, AK 6, AK 7, AK 8, AK 11, AK 13, AK 14, AK 16, AK 17, AK 21, Appendices 1-4. At most, they are suitable to be used as supplementary material to other, meaningful, documents.

The main evidence is found in the invoices in AK 3, which are supported by the other documents submitted. These invoices are essentially within the period to be assessed, show sufficient amounts to different recipients within the EU and show the marks ‘CROCK TAIL’ and ‘MAD CROCK’ for some non-alcoholic and alcoholic drinks. There are more than 15 invoices for the period 2011-2015, sent to various companies in Finland and the Netherlands. The total amounts of the individual invoices are at least in the four-digit — sometimes in the five-digit — range. Thus, it is information that can contribute significantly to the proof of use of the earlier trade marks. It should also be borne in mind that the requirements for demonstrating the use of the marks must not be set too high.

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade marks during the relevant period in the relevant territories.

However, the evidence filed by the opponent does not show genuine use of the trade marks for all the goods covered by the earlier trade marks.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

In the present case, the evidence shows genuine use of the following trade marks for the following goods:

Trade Mark No 1 (see above) for the following goods in Class 33:

Alcoholic beverages.

Trade Marks No 3, 4 and 5 (see above, as far as the European Union is concerned) for the following goods in Class 32:

Energy drinks, carbonated drinks, soft drinks, non-alcoholic beverages; sports drinks.

Therefore, the Opposition Division will in principle only consider the abovementioned goods in its further examination of the opposition.

However, since European Union trade mark registration No 12 858 155 (which was not subject to the request for proof of use) has a broader scope of protection as regards the goods in Classes 32 and 33, the Office will continue its examination with this earlier trade mark (see preliminary remark above).

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.

1. The goods

The goods in Classes 32 and 33 on which the opposition is based are the following:

Class 32: Beers; non-alcoholic beers and wines; non-alcoholic drinks/beverages; mineral and aerated waters; syrups for making beverages; fruit drinks and fruit juices; energy drinks; frozen concentrated fruit drinks; part-frozen slush drinks; frozen carbonated beverages; carbonated drinks; non-alcoholic cocktails; concentrates and preparations for use in making all the aforesaid beverages.

Class 33: Alcoholic beverages; alcoholic drink preparations; alcoholic extracts; wines; cocktails; alcoholic beverages containing not more than 12 percent of alcoholic by volume; alcoholic drink preparations containing not more than 12 percent of alcohol by volume.

The contested goods (after a partial refusal), in Class 30 are the following:

Coffee, vegetal preparations for use as coffee substitutes, tea, cocoa, pastries (sweet or savoury), sweet or savoury puffs, cookies, foodstuffs made from cereals, ready meals, made wholly or partially of baked goods, puddings in powder form, bread, mixes for the preparation of bread, buns, baguettes, scones, bagels, sponge cake, rusks, biscuits (sweet or savoury), wafer biscuits, pancake waffles; sweet or savoury snacks made of biscuits, baked goods, dough or batter; pastry and confectionery; dairy confectionery, cake powder, cake mixes, bakery desserts, chocolate, mousses (chocolate -), filled sweetmeats, chocolate products, candy, hard and soft caramels (candies), filled sweetmeats, foamed sugar sweets, sugarless sweets, gum sweets or lozenges having liquid fruit fillings, flavoured gelatine desserts, confectionery chips for baking, corn chips, rice crisps; crisps made of cereals; chocolate-based and cocoa-based beverages, edible ices, ice creams, sweet sauces, ice cream desserts, prepared deserts, chewing gum, not for medical purposes, lollipops, ice lollies, ice beverages with a coffee base, chocolates or cocoa, coffee beverages with or without milk, chocolate beverages with or without milk, chocolate spreads for use on bread, paste for making coffee beverages, flavoured topping for desserts, fruit cake snacks; maize flakes; preparations made from cereals; breakfast cereals; cereal bars and energy bars; snack food products made from cereal flour; breakfast cereals, porridge and grits; breakfast cereals containing a mixture of fruit and fibre; candy bars; chocolate bars; ice cream stick bars; muesli bars; confectionery bars; granola-based snack bars; seed based snack bars; snack bars containing a mixture of grains, nuts and dried fruit; ice milk bars; muesli; flaked wheat; barley flakes; oat flakes; maize flakes; dairy confectionery; snack foods consisting principally of confectionery.

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.

The contested coffee, vegetal preparations for use as coffee substitutes, tea, cocoa; chocolate-based and cocoa-based beverages; ice beverages with a coffee base, chocolates or cocoa, coffee beverages with or without milk, chocolate beverages with or without milk are similar to non-alcoholic drinks/beverages in Class 32, as they usually coincide in producer, relevant public and distribution channels. Furthermore, they are in competition.

The remaining contested pastries (sweet or savoury), sweet or savoury puffs, cookies, foodstuffs made from cereals, ready meals, made wholly or partially of baked goods, puddings in powder form, bread, mixes for the preparation of bread, buns, baguettes, scones, bagels, sponge cake, rusks, biscuits (sweet or savoury), wafer biscuits, pancake waffles; sweet or savoury snacks made of biscuits, baked goods, dough or batter; pastry and confectionery; dairy confectionery, cake powder, cake mixes, bakery desserts, chocolate, mousses (chocolate -), filled sweetmeats, chocolate products, candy, hard and soft caramels (candies), filled sweetmeats, foamed sugar sweets, sugarless sweets, gum sweets or lozenges having liquid fruit fillings, flavoured gelatine desserts, confectionery chips for baking, corn chips, rice crisps; crisps made of cereals; edible ices, ice creams, sweet sauces, ice cream desserts, prepared deserts, chewing gum, not for medical purposes, lollipops, ice lollies, chocolate spreads for use on bread, paste for making coffee beverages, flavoured topping for desserts, fruit cake snacks; maize flakes; preparations made from cereals; breakfast cereals; cereal bars and energy bars; snack food products made from cereal flour; breakfast cereals, porridge and grits; breakfast cereals containing a mixture of fruit and fibre; candy bars; chocolate bars; ice cream stick bars; muesli bars; confectionery bars; granola-based snack bars; seed based snack bars; snack bars containing a mixture of grains, nuts and dried fruit; ice milk bars; muesli; flaked wheat; barley flakes; oat flakes; maize flakes; dairy confectionery; snack foods consisting principally of confectionery have different natures to the opponent’s goods. Furthermore, these contested goods are neither complementary to nor in competition with the opponent’s goods. The fact that they can be consumed together is not sufficient to establish complementarity. Furthermore, their producers and methods of use are different. In supermarkets or other shops, they are sold in different areas. Consumers would not assume that these goods come from the same undertaking or economically linked undertakings. The fact that they all belong to the category of foodstuff is not sufficient to make them similar. Therefore, they are dissimilar.

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 similar are directed at the public at large. The degree of attention is average.

3. The signs
   
   

	Crocodile
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C 514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The elements ‘CROC’ and ‘Tail’ are meaningful in those territories where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, such as the public in Ireland, Malta and the United Kingdom, because for this public there are also conceptual similarities between the signs.

The contested sign is a word mark, which is protected in all typefaces.

The earlier sign is a figurative mark. It consists of the word ‘CROC’ in simple bold typeface, followed by the word ‘Tail’ in a significantly smaller typeface. Below this is the stylised depiction of a (crocodile) tail.

The contested sign will be understood with this meaning. Since it has no meaning for the goods, it is distinctive. The same applies for the different word elements of the earlier trade mark and its figurative element, which is not basic. ‘CROC’ is a common informal abbreviation for ‘crocodile’ in English, see https://www.oxfordlearnersdictionaries.com/definition/english/croc?q=croc.

The element ‘CROC’ and the depiction of a tail in the earlier trade mark are the dominant elements, as they are the most eye-catching.

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).

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs differ in the distinctive figurative elements of the earlier trade mark. They further differ in the additional word ‘Tail’, which, due to its small size, is not clearly visible. The other dominant element of the earlier trade mark, ‘CROC’, is completely included in the beginning of the contested sign, although depicted differently. The signs also differ in the remaining letter combination ‘odile’ of the contested sign. Therefore, the signs are visually similar to a below average degree.

Aurally, the figurative element will not be pronounced. The signs coincide in the elements ‘CROC’ and differ in the additional letter combination ‘odile’ of the contested sign. Due to its small size, the other verbal element of the earlier trade mark, ‘Tail’, will not be pronounced. Therefore, the signs have a similar pronunciation and rhythm, leading to an average degree of aural similarity.

Conceptually, as mentioned above, the element ‘CROC’ of the earlier trade mark will be understood as an informal expression for ‘crocodile’. The other elements of the sign, namely the word ‘Tail’ and the depiction of a tail, reinforce this meaning. Therefore, the signs are conceptually highly similar.

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

4. Distinctiveness of the earlier mark

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

The opponent claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim. The documents submitted to prove use of the earlier trade marks cannot be taken into account because they were submitted outside of the relevant period for submitting further facts and evidence (see the Office’s letter of 13/06/2016). Nor can they be regarded as belated evidence, since this only applies to additional and supplementary evidence, but not to completely new evidence.

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

A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular a similarity between the marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or services may be offset by a greater degree of similarity between the marks, and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17; and 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation 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).

For the purpose of the global appreciation, the average consumer of the category of goods or services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. The consumer’s degree of attention is likely to vary according to the category of goods or services in question, and 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; and 30/06/2004, T‑186/02, Dieselit, EU:C:2011:238, § 38).

The contested goods are partly similar and partly dissimilar.

According to Article 8(1)(b) EUTMR, similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are partly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected in regard to those goods.

Taking into account the below average degree of visual similarity, the average degree of aural similarity, the high degree of conceptual similarity, the normal distinctiveness of the earlier trade mark, the not more than average degree of attentiveness of the public and the similarity of the goods, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and, therefore, the opposition is upheld.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Contrary to the applicant’s opinion, the differences between the signs are not sufficient to distinguish them clearly from each other. They will be assumed to come from the same or economically linked undertakings.

Therefore, the opposition is partly well founded under Article 8(1)(b) 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.

As already stated under Article 8(1)(b) EUTMR, no evidence has been submitted by the opponent. Therefore, there was no increased distinctiveness and logically no reputation could be found.

b) Conclusion

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

Claudia MARTINI

Peter QUAY

Martin EBERL

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.