OPPOSITION No B 2 774 274

Hochland Española, S.A., Llobatona, 59 — Polig. Ind. del Centro, 08840 Viladecans (Barcelona), Spain (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative)

a g a i n s t

Granarolo S.P.A., Via Cadriano 27/2, 40127 Bologna, Italy (applicant), represented by Perani & Partners SPA, Piazza Armando Diaz, 7, 20123 Milano, Italy (professional representative).

On 10/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 774 274 is partially upheld, namely for the following contested goods:

Class 29: Milk and milk products; drinks made from dairy products; milk beverages, milk predominating; beverages made from or containing milk; drinks made from dairy products; drinks based on yogurt; flavoured milk beverages; milk beverages, milk predominating; milk drinks containing fruits; milk beverages, milk predominating; yogurt drinks; beverages consisting principally of milk; butter; garlic butter; butter with herbs; double cream; buttercream; smetana [sour cream]; dairy spreads; low fat dairy spreads; cheese spreads; dulce de leche [condensed milk]; ferments (milk -) for culinary purposes; cheese fondue; cheese products; cream cheese; soft white cheese; fresh unripened cheeses; cheese mixtures; cheese products; low fat cheese; soft cheese; cheese containing herbs; cheese containing spices; soft white cheese; cottage cheese; blue cheese; cream cheese; ready grated cheese; cheese powder; processed cheese; cheese dips; hard cheeses; milk; curd; protein milk; protein milk; flavoured milk; organic milk; cows’ milk; buttermilk; curd; curd; condensed milk; soya milk [milk substitute]; soya milk [milk substitute]; dried milk; fermented milk; dried milk; goat milk; flavoured milk powder for making drinks; powdered milk for food purposes; protein milk; skimmed milk; milk products; margarine; blended butter; smetana [sour cream]; whipped cream; coffee cream in the form of powder; cream [dairy products]; milk products; preparations for making yoghurt; butter substitutes; cottage cheese preparations; milk products; quark; cheese curd; cheese dips; margarine substitutes; yoghurt; soya yoghurt; low fat yoghurts; flavoured yoghurts; fruit flavoured yoghurts; drinking yogurts; yoghurt made from goats milk; custard style yoghurts; savory butters; clarified butter; concentrated butter; butter for use in cooking; dairy puddings; desserts made from milk products; yoghurt desserts; dairy puddings; artificial milk based desserts; dairy-based dips; substitutes for milk and cheese products; soya milk [milk substitute]; soya yoghurt; vegetable yoghurt; soya milk [milk substitute]; soy‑based creams.

2. European Union trade mark application No 15 538 903 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 15 538 903. The opposition is based on Spanish trade mark registration No 1 936 578 ‘OGGI’ and international trade mark registration No 1 263 810 , designating Portugal. The opponent invoked Article 8(1)(a) and (b) EUTMR.

SUBSTANTIATION — international trade mark registration No 1 263 810

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.

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 paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR (in the version in force at the time of commencement of the adversarial part).

On 30/11/2016, the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. The time limit set by the Office expired on 05/04/2017.

On 20/09/2016, along with the notice of opposition, the opponent submitted an extract from the Portuguese Intellectual Property Office database to substantiate international trade mark registration No 1 263 810 designating Portugal, on which, inter alia, the opposition was based. On 21/09/2016, the opponent submitted a translation of this document.

The evidence in question is not sufficient to substantiate the opponent’s earlier international trade mark, because extracts from national offices’ databases are not accepted as valid evidence for this kind of earlier mark.

International registrations are processed by WIPO and this is the administration by which these trade marks are registered. Therefore, it is the sole body responsible for keeping official records of any international registration regardless of designation, whether the European Union or any country.

Therefore, a certificate of registration or any other equivalent evidence emanating from WIPO, such as a ROMARIN extract, is needed to substantiate international trade mark registrations. In addition, the Opposition Division also accepts database extracts from TMview for the same purpose, as long as they contain all the necessary information, and as long as the evidence is submitted by the opponent (see Opposition Guidelines, Part C, Procedural Matters, Point 4.2.3.2, page 34).

The opponent submitted the required evidence on 11/10/2017, that is, only after the expiry of the abovementioned time limit (05/04/2017).

Therefore, the abovementioned evidence submitted within the relevant time limit is not sufficient to substantiate the opponent’s earlier international trade mark.

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.

The applicant requested that the opponent submit proof of use of earlier Spanish trade mark registration No 1 936 578 ‘OGGI’.

The date of filing of the contested application is 13/06/2016. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 13/06/2011 to 12/06/2016 inclusive.

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

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

Class 29: Meat, fish, poultry and game, meat extracts, preserved, dried and cooked fruits and vegetables, jellies and jams, eggs, milk and milk products, edible oils and fats, preserves, prepared meat, fish and vegetable dishes.

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 09/06/2017, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent, after an extension of the time limit, until 14/10/2017 to submit evidence of use of the earlier trade mark. On 11/10/2017, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is the following:

 Numerous invoices dated between January 2012 and March 2016, all containing references to the sign ‘OGGI’ for various types of cheese (i.e. ‘lonchas, Rallado Gratinar, Rallado 2, 3 o 4 quesos, Hilo, Rallado Pizza, Rallado mozzarella, Rallado Emmental’).

 A declaration issued by the opponent’s General Manager attesting that the Spanish company Productos Lacteos TGT, S.A. has been using ‘OGGI’ marks in Spain and Europe with its full knowledge and express consent.

 A brochure, photographs of packaging and labels for the opponent’s ‘OGGI’ goods, namely various types of cheeses, as marketed in Spain and throughout Europe.

 Excel spreadsheets of orders for and transactions in the opponent’s ‘OGGI’ goods, with customers located throughout Spain, covering the whole relevant period.

Place of use

The photographs of packaging and the invoices show that the place of use is Spain. This can be inferred from the language of the documents (Spanish), the currency mentioned (euros) and some addresses in Spain. Therefore, the evidence relates to the relevant territory.

Time of use

Although some of the documents submitted are undated, namely the photographs of packaging, almost all of the other evidence, in particular the invoices, is dated within the relevant period. Therefore, the evidence provides sufficient information concerning the time of use.

Extent of use

The documents filed, in particular the invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. It can be clearly seen that the owner has seriously tried to acquire a commercial position in the relevant market by using its mark for various types of cheese within the relevant period. For instance, the volume of goods sold exceeded 60 000 units in several places in Spain from January 2012 to March 2016. Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier mark in Spain.

Nature of use

The evidence in general shows that the earlier sign was used in such a way as to establish a clear link between the goods and the undertaking responsible for their marketing.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

The evidence shows that the mark has been used in accordance with its function.

According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 47(2) and (3) EUTMR, Article 18 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the trade mark was registered as the word mark ‘OGGI’. The evidence shows that the trade mark was used as . This can be seen from the photographs of packaging submitted by the opponent.

The typeface of the sign used on the packaging is fairly standard. The figurative element and the colours play only a minor role, being merely decorative. Therefore, the distinctive character of the sign as registered is not affected.

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

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

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 demonstrates that the opponent has used the mark for various types of cheese.

However, the evidence does not succeed in establishing that the trade mark was put to genuine use for the rest of the goods on which the opposition is based. The proof of use relates only to cheese, whereas there is no reference to the use of the opponent’s mark for the remaining goods.

According to case-law, when applying the abovementioned provision, the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub‑categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub‑category or sub‑categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub‑categories.

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 45‑46.)

The earlier mark is registered for, inter alia, milk products. It is clear that this category of goods is sufficiently broad for several subcategories to be identified within it. The evidence shows that the contested mark has been used for cheese. The Opposition Division finds that cheese, which falls within the broad category of milk products, constitutes a sufficiently coherent and independent subcategory.

Therefore, the Opposition Division considers that the evidence of use in its entirety sufficiently indicates the place, time, extent and nature of use of the opponent’s trade mark for cheese.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

In the present case, contrary to the applicant’s arguments, the documentation, as a whole, shows that the evidence refers to cheese. The invoices include the code of each item, and these codes coincide with the codes used in the brochure (i.e. codes 2480 and 2487 for lonchas, codes 3537, 3584, 3585 and 3586 for Rallado).

The applicant correctly argues that no unit prices and no overall sales figures have been submitted by the opponent. However, the invoices show the quantity of goods sold under the opponent’s trade mark ‘OGGI’, and the commercial volume can still be inferred from the quantity of goods sold.

Taking the above into account, the Opposition Division will consider only the abovementioned goods in its further examination of the opposition.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

a) The goods

The goods on which the opposition is based and for which genuine use has been proven are the following:

Class 29: Cheese.

The contested goods are the following:

Class 29: Milk and milk products; drinks made from dairy products; milk beverages, milk predominating; beverages made from or containing milk; drinks made from dairy products; drinks based on yogurt; flavoured milk beverages; milk beverages, milk predominating; milk drinks containing fruits; milk beverages, milk predominating; yogurt drinks; beverages consisting principally of milk; butter; garlic butter; butter with herbs; double cream; buttercream; smetana [sour cream]; dairy spreads; low fat dairy spreads; cheese spreads; dulce de leche [condensed milk]; ferments (milk -) for culinary purposes; cheese fondue; cheese products; cream cheese; soft white cheese; fresh unripened cheeses; cheese mixtures; cheese products; low fat cheese; soft cheese; cheese containing herbs; cheese containing spices; soft white cheese; cottage cheese; tofu; blue cheese; cream cheese; ready grated cheese; cheese powder; processed cheese; cheese dips; hard cheeses; milk; curd; protein milk; protein milk; flavoured milk; organic milk; cows’ milk; buttermilk; curd; curd; condensed milk; soya milk [milk substitute]; soya milk [milk substitute]; dried milk; fermented milk; dried milk; goat milk; flavoured milk powder for making drinks; powdered milk for food purposes; protein milk; skimmed milk; milk products; margarine; blended butter; smetana [sour cream]; whipped cream; coffee cream in the form of powder; cream [dairy products]; milk products; preparations for making yoghurt; butter substitutes; cottage cheese preparations; milk products; quark; cheese curd; cheese dips; margarine substitutes; tofu; yoghurt; soya yoghurt; low fat yoghurts; flavoured yoghurts; fruit flavoured yoghurts; drinking yogurts; yoghurt made from goats milk; custard style yoghurts; eggs; quail eggs; savory butters; clarified butter; concentrated butter; butter for use in cooking; coconut butter; dairy puddings; desserts made from milk products; yoghurt desserts; dairy puddings; artificial milk based desserts; dairy-based dips; substitutes for milk and cheese products; soya milk [milk substitute]; soy-based snack foods; soya yoghurt; vegetable yoghurt; soya milk [milk substitute]; tofu; tofu; creamed vegetables; vegetable béchamel sauce; vegetable puree; soy-based creams; soy-based extruded foods.

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 milk products include, as a broader category, the opponent’s cheese. 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 cheese products include, as a broader category, the opponent’s cheese. 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 cheese spreads; cheese fondue; cream cheese; soft white cheese; fresh unripened cheeses; cheese mixtures; low fat cheese; soft cheese; cheese containing herbs; cheese containing spices; cottage cheese; blue cheese; ready grated cheese; cheese powder; processed cheese; cheese dips; hard cheeses; cottage cheese preparations; quark; cheese curd are included in the broad category of the opponent’s cheese. Therefore, they are identical.

The contested substitutes for milk and cheese products are similar to a high degree to the opponent’s cheese. They have the same method of use, providers and points of sale, and they target the same end consumers. Furthermore, they are in competition.

The contested milk; drinks made from dairy products; milk beverages, milk predominating; beverages made from or containing milk; drinks made from dairy products; drinks based on yogurt; flavoured milk beverages; milk drinks containing fruits; yogurt drinks; beverages consisting principally of milk; butter; garlic butter; butter with herbs; double cream; buttercream; smetana [sour cream]; dairy spreads; low fat dairy spreads; dulce de leche [condensed milk]; ferments (milk -) for culinary purposes; curd; protein milk; flavoured milk; organic milk; cows’ milk; buttermilk; condensed milk; dried milk; fermented milk; goat milk; flavoured milk powder for making drinks; powdered milk for food purposes; skimmed milk; blended butter; smetana [sour cream]; whipped cream; coffee cream in the form of powder; cream [dairy products]; preparations for making yoghurt; yoghurt; low fat yoghurts; flavoured yoghurts; fruit flavoured yoghurts; drinking yogurts; yoghurt made from goats milk; custard style yoghurts; savory butters; clarified butter; concentrated butter; butter for use in cooking; desserts made from milk products; yoghurt desserts; dairy puddings; dairy-based dips are similar to an average degree to the opponent’s cheese, as they have the same nature and can have the same producers, distribution channels and relevant public.

The contested soya milk [milk substitute]; butter substitutes; margarine; margarine substitutes; soya yoghurt; vegetable yoghurt; artificial milk based desserts; soy-based creams are similar to a low degree to the opponent’s cheese. They have the same points of sale and target the same end consumers.

The contested tofu; eggs; quail eggs; soy-based snack foods; creamed vegetables; vegetable puree; soy-based extruded foods; coconut butter; vegetable béchamel sauce are dissimilar to all the opponent’s goods, since they differ in nature, purpose, method of use, distribution channels and points of sale. They are neither complementary nor in competition, do not target the same consumers, and are not likely to come from the same kind of undertakings.

b) Relevant public — degree of attention

The average consumer of the category of goods 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 to varying degrees are directed at the public at large. The degree of attention is considered average.

c) The signs

OGGI
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 elements of both marks have no meaning for the relevant public and are, therefore, distinctive.

The three parallel lines at the beginning of the word elements of the contested sign do not convey any specific semantic content to the public. Although they are distinctive to an average degree, the public will not attribute the same trade mark significance to this figurative element as it will to the mark’s verbal component. 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).

The words ‘OGGI PUOI’ in the contested sign are the dominant elements as they are the most eye-catching.

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 coincide in the word ‘OGGI’, notwithstanding its very slight stylisation in the contested sign. The signs differ in the contested sign’s second verbal element, ‘PUOI’, and in the figurative element of the contested sign, which, however, will have a limited impact on the consumer, for the reasons given above.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘OGGI’, present identically in both signs. The pronunciation of the contested sign differs in the sound of the letters of the second word, ‘PUOI’.

Therefore, the signs are aurally similar to an average degree.

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.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

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 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

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and 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).

The goods are partly identical, partly similar to varying degrees and partly dissimilar and are directed at the public at large, which has an average degree of attention. The signs are similar to the extent that they both include the element ‘OGGI’, which is the only verbal element of the earlier mark and appears at the beginning of the contested sign, to which consumers will pay particular attention. The additional element of the contested mark, ‘PUOI’, occupies a secondary position in the mark, and the figurative element of the contested sign will have a limited impact on consumers. Therefore, the dissimilarities are not sufficient to outweigh the similarities and to exclude a likelihood of confusion in this case.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. In this case, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

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).

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

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

Opposition decision No 314/2002 of 14/02/2002 regarding the signs and ‘OGGI SI VOLA’ is a very old decision and, since it was issued, the Office’s practice has changed. Furthermore, the relevant territory was Germany and the goods involved were in Class 25, so the circumstances therein cannot be extrapolated to the present case.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration.

The opposition is also successful insofar as the goods that are similar to a low degree are concerned, since the similarity between the marks is enough to outweigh the low degree of similarity between those goods.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as it is based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods because the signs and the goods are obviously not identical.

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

Inés GARCÍA LLEDO

Richard BIANCHI

Marta GARCÍA COLLADO

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.