OPPOSITION No B 3 063 053

Akcinė Bendrovė "Pieno Žvaigždės", Perkūnkiemio g. 3, 12127 Vilnius, Lithuania (opponent), represented by Metida Law Firm Zaboliene and Partners, Business center Vertas Gynéjų str. 16, 01109 Vilnius, Lithuania (professional representative)

a g a i n s t

Ljubljanske Mlekarne, mlekarska industrija, d.o.o., Tolstojeva ulica 63, 1000 Ljubljana, Slovenia (applicant), represented by Jure Marn, Ljubljanska ulica 9, 2000 Maribor, Slovenia (professional representative).

On 16/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 063 053 is partially upheld, namely for the following contested goods:

Class 29: Milk and milk products; kephir; cream [dairy products]; butter; cheese; hard and soft cheeses; fresh and matured cheeses; cheese; curd; yoghurt; natural yoghurt, liquid and solid; low- fat natural yoghurt; yoghurt with added fruit and fruit yoghurts; goods made from yoghurt or with added yoghurt; milk-based fermented goods; milk drinks; products with added vitamins and minerals based on the aforesaid goods, not included in other classes.

Class 30: Edible ices; frozen yoghurt (confectionery); yoghurt flavoured ice cream and ice cream with added yoghurt; pastry, confectionery; in particular made of or containing milk; goods with added vitamins and minerals based on the above goods and not included in other classes.

2. European Union trade mark application No 17 873 600 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 17 873 600 for the figurative mark , namely against some of the goods in Classes 5, 29 and 30. The opposition is based on Lithuanian trade mark registrations No 37 143 for the word mark ‘MŪ’, No 37 260 for the figurative mark and No 37 263 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

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 the trade marks on which the opposition is based.

The date of filing of the contested application is 12/03/2018. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Lithuania from 12/03/2013 to 11/03/2018 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:

Class 29: Milk and milk products.

According to Article 10(3) EUTMDR, 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 11/09/2018, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 16/01/2019, subsequently extended upon the opponent’s request until 16/03/2019 (a Saturday), to submit evidence of use of the earlier trade marks. On 18/03/2019 (the following Monday), within the time limit, the opponent submitted evidence of use. On 27/05/2019, the opponent replied to the applicant’s request to translate the evidence submitted into the language of the proceedings.

The opponent indicated that its submissions of 18/03/2019 were ‘Confidential’, thus expressing a special interest in keeping these documents confidential vis-à-vis third parties. In accordance with Article 114(4) EUTMR, the special interest must be sufficiently justified. In the present case, the special interest has not been sufficiently justified or elaborated upon. Therefore, the Opposition Division does not consider these submissions confidential. In any event, the Opposition Division will describe the evidence in general terms, without disclosing commercially potentially sensitive information.

The evidence to be taken into account is the following:

• ITEM 1 which consists of the Affidavit and its annexes:

• Affidavit of the opponent’s Head of marketing, dated 14/03/2019, stating that the milk and milk products of the opponent are sold under the earlier marks since 1998 in Lithuania through retail chains such as Iki, Rimi, Maxima and Norfa.

• Exhibit 1 provides a list of the abovementioned supermarkets in Lithuania, with their addresses located throughout the country.

• Exhibit 2 consists in links to the abovementioned supermarkets’ promotional booklets, in particular one from Maxima (28/02 –06/03/2017) and four from Rimi (6-19/09/2016; 02/03/2015 – 02/09/2015; 14/05/2013; 19/05/2017).

• Exhibit 3 contains marketing material. A document published on the opponent’s website (with a date in 2019) states that the opponent’s products are among the most popular items. The opponent explains in its observations that the products that win a contest called ‘most popular product’ – organised since 2009 – are offered for sale on supermarkets’ shelves characterised as ‘most popular’. The winning products are selected by evaluating their sales in the supermarkets. According to the opponent, its products have won in five categories in 2017. The document referred to mentions as most popular product the opponent’s milk under the trade mark . The opponent further provides pictures of the abovementioned awards (‘most popular product’) for 2013, 2015, 2016 and 2017. The opponent provides another picture of the ‘Agrobalt award’ and explains that it is an international and ‘probably the largest agricultural and food processing exhibition in the Baltic States’. Moreover, the opponent claims that in 2002 one of its milk products (15% fat curd) won a medal for the best product of the year. To this effect, the opponent produces a catalogue with information about its milk and milk products (sweet whipping cream, cream, curd, cheese sticks), in English and few pages in Lithuanian. The catalogue is undated, but the sales performances are from 2006 to 2012 and a halal certificate pictured on the side of the document is valid until 2009. The opponent provides also screenshots of an article with the title ‘Lithuania superbrands – An insight into some of Lithuania’s strongest brands 2007’. At the bottom of the pages, the opponent’s website www.pienozvaigzdes.lt is listed. This article describes the ‘MŪ’ dairy products among the diverse range of the opponent’s products.

• Exhibit 4 is a self-made table showing the sales revenues for the relevant period (divided per year and per product, such as milk, sour cream, cream, curd, unripened cheeses), whose total is a significantly high amount, specified in euros.

• Exhibit 5 contains numerous invoices dated within the relevant period and addressed at the aforementioned retail chains in Lithuania and including the earlier mark ‘MŪ’ together with the indication of the products, such as milk (Pienas), sweet whipping cream and sour cream (Grietinėlė / Grietinė), curd (Varškė), cheese sticks (Sūrio lazdelės). The documents have been provided in Lithuanian and are mostly self-explanatory. Further to a request of the applicant, the relevant parts of the invoices have been translated into English.

• ITEM 2 shows use of the earlier marks on websites:

• Screenshot of an article entitled ‘Milk in supermarket chains: is it really just the price?’ (translated from original in Lithuanian), published on 11/06/2016 on the online news portal ‘Delfi’, showing a picture of the refrigerated shelves of a supermarket displaying several milk products, including milk. Within the article itself, the opponent’s company is mentioned in relation to milk.

• Screenshot of an article entitled ‘A new obligation for the dairy industry: producers have turned to court’ (translated from original in Lithuanian), published on 21/10/2016 on the online business news portal ‘Verslo žinios’, showing a picture of the refrigerated shelves of a supermarket displaying several milk products, including milk. Within the article itself, the opponent’s company is mentioned in relation to milk.

• Screenshot of an article entitled ‘The most popular product 2017 results revealed Lithuanian buying habits’ (translated from original in Lithuanian), published on 16/03/2018 in the news portal ‘Delfi’ about the contest ‘Most popular product 2017’ where the milk products covered by the earlier trade marks ‘MŪ’ have been recognized as the most popular products and took the second place of the most popular products in 2017. These elections are organized by the Association of Lithuanian Trade Enterprises (LPAI). In particular, the article explains that, in total, 32 suppliers and manufacturers presented their goods in the ‘Most Popular Product’ election. The winners were selected in 56 categories, taking into account the choice of the country’s consumers - the biggest sales in 2017. Another feature of this election (which was the 9th) was that food sales were measured in units of weight rather than packaging units.

On 29/08/2019, after expiry of the time limit, the opponent submitted additional evidence in relation to Exhibit 2, namely screenshots of the content of the links indicated therewith, showing supermarkets’ catalogues on which the opponent’s milk and milk products were displayed. This was in reply to the applicant’s observations contesting the links indicated in this piece of evidence.

In the present case, the issue of whether or not the Office may exercise the discretion conferred on it by Article 95(2) EUTMR to take into account the additional evidence does not need to be addressed, as the evidence submitted within the time limit is sufficient for the substantiation of the earlier trade marks.

On 27/05/2019, in reply to the applicant’s request to translate the evidence submitted into the language of the proceedings, the opponent translated some parts of the evidence, including a sample invoice. In this regard, the applicant contests the veracity of the invoices, in particular of their dates. The Opposition Division notes, first of all, that the relevance and credibility of commercial documents is not disputed. In any event, and since the invoices are mainly self-explanatory, even from the ones that have not been translated it is clear that in Lithuania generally dates are written in a different order, therefore, the dates of the invoices are not inconsistent with the ones of the different types of payment (e.g., factoring, etc.). This is clear, for example, from invoice Nr. 3387300, where its date is 2013 spalio 3d, i.e. 2013 October 3d, and the payment date is ‘13.10.24’, where ‘13’ is obviously the year 2013.

As far as the affidavit is concerned, Article 10(4) EUTMDR 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 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 marks are 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.

Place of use

The invoices, the location of the supermarkets where the opponent’s goods are distributed, the awards and the news articles show that the place of use is Lithuania. This can be inferred from the language of the documents (‘Lithuanian’), the currency mentioned (Euros) and the addresses in various cities of Lithuania. Therefore, the evidence relates to the relevant territory.

Time of use

Most of the evidence is dated within the relevant period.

Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use during the relevant period of time as well. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50).

In the present case, the evidence referring to use outside the relevant period confirms use of the opponent’s mark within the relevant period. This is because it refers to the use of the trade marks within the period (which is the case of the news article dated 16/03/2018 but referring to events occurred in 2017), or because the use it refers to is very close in time to the relevant period (the sales performances indicated in the undated opponent’s catalogue are up to 2012, therefore drawn up in the same year or in 2013). Therefore, this evidence is relevant to better assess the extent of use and the real intentions of the opponent.

Extent of use

The documents filed, in particular the invoices and the news articles, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The invoices, contrary to the applicant’s claim, show a certain extent of use, and the news articles provided by third parties confirm the affirmations of the affidavit and the information of the opponent’s marketing materials.

Nature of use

The evidence shows that the marks have been used in accordance with their function and as registered for all the goods for which they are registered.

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).

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

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 Lithuanian trade mark registrations No 37 143 for the word mark ‘MŪ’.

1. The goods

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

Class 29: Milk and milk products.

The contested goods are the following:

Class 5: Products with added vitamins and/or minerals, in particular products containing milk or with the addition of milk, all for medical use; dietetic preparations based on milk, milk products, kefir (milk beverage), cream, butter, cheese, hard and soft cheeses, fresh and ripened cheeses, cheese products, curd, yoghurts, liquid and strained plain yoghurts, reduced-fat plain yoghurts, yoghurts with added fruit and fruit yoghurts, products made from yoghurt or with added yoghurt, fermented milk-based products, milk beverages,; dietetic preparations based on edible ices, frozen yoghurt (confectionery), edible ices with added yoghurt or a yoghurt flavour, pastries and confectionery, in particular made from or containing milk.

Class 29: Milk and milk products; kephir; cream [dairy products]; butter; cheese; hard and soft cheeses; fresh and matured cheeses; cheese; curd; yoghurt; natural yoghurt, liquid and solid; low- fat natural yoghurt; yoghurt with added fruit and fruit yoghurts; goods made from yoghurt or with added yoghurt; milk-based fermented goods; milk drinks; products with added vitamins and minerals based on the aforesaid goods, not included in other classes.

Class 30: Edible ices; frozen yoghurt (confectionery); yoghurt flavoured ice cream and ice cream with added yoghurt; pastry, confectionery; in particular made of or containing milk; goods with added vitamins and minerals based on the above goods and not included in other classes.

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

The term ‘in particular’, used in the applicant’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).

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 5

The contested goods in this class, contrary the opponent’s allegations, are all dissimilar to the opponent’s goods in Class 29. They differ insofar they are for medical use, i.e. to prevent or treat diseases, while the opponent’s goods have a nutritional purpose. They differ in other relevant criteria, such as producers and distribution channels. Products with added vitamins and/or minerals for medical use and dietetic preparations based on milk, milk products and/or in particular made from or containing milk are specifically intended for special dietary use. Regular milk (from cows, goats etc.), or milk products (yoghurt or kefir etc.) are not interchangeable with the contested goods in this class. These goods may come from different industries – can be synthesised in labs and approved by nutritionists. Milk and milk products are natural (agricultural) products. Whilst they have to comply with food safety standards, the manner and degree of controlling the manufacture and circulation of milk products differs greatly from the manner and degree of controlling the production and circulation of the dietetic preparations. The channels of distribution are different. The contested goods are close to medicines and are usually sold in pharmacies and drugstores or in special sections in supermarkets. The applicant’s goods are essentially foodstuffs and beverages for humans. The mere fact that the contested goods are based on milk or milk products, which are the opponent’s goods, is not sufficient to establish similarity.

Contested goods in Class 29

All the contested goods in this class are identical to the opponent’s goods in the same class, either because they are identically contained in both lists (milk and milk products) or because the contested goods are included in, or overlap with, the opponent’s goods. The fact that these goods can have added vitamins and minerals does not change their nature of milk products or products essentially based on milk.

Contested goods in Class 30

All the contested goods in this class are at least similar to a low degree to the opponent’s goods in Class 29 as they have the same purpose and nature. They usually coincide in producer, relevant public and distribution channels. Furthermore they are in competition. The fact that these goods can have added vitamins and minerals does not change their nature.

2. Relevant public — degree of attention

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

In the present case, the goods found to be identical or similar (to at least a low degree) are directed at the public at large.

Contrary to the applicant’s observations in that respect, the degree of attention is considered to be average. The Opposition Division cannot hold true the statement that all consumers would, by performing their daily grocery shopping, always pay a much higher degree of attention due to the a possible contamination of milk products. On the contrary, these products are of a daily character and belong to the category of frequently purchased products.

3. The signs and the distinctiveness of the earlier mark

MŪ
Earlier trade mark	Contested sign

The relevant territory is Lithuania.

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

The earlier mark is the single word mark ‘MŪ’. In case of word marks, it is the word as such that is protected, independently from its representation (in upper, lower or title case). The accent placed on the vowel ‘U’ has, according to the Lithuanian orthography, the mere function of rendering the vowel slightly longer.

The contested sign is composed of the same single word of the earlier mark, with the only omission of the accent on the vowel ‘U’. Its figurative elements consist in the representation in white slightly stylised lower-case characters, depicted against a circular background of several layers in three shades of green. 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 applicant claims that the accent on the vowel ‘U’ is of fundamental importance in differentiating the signs at issue, since ‘MU’ with the accent refers to the mooing of a cow, and without the accent it is a meaningless word. This is not the case as, for the Lithuanian public, both words have the same meaning, if any. The accent on the vowel ‘U’ has only an impact on the length of its sound. Moreover, the lack of accent in the contested sign may easily go unnoticed as it is barely perceptible and is likely not to be given much importance on its own by the relevant public.

Concerning the distinctiveness of the signs’ verbal elements, it must be considered as normal for the part of the public for which they are both meaningless, as well as for those who will see in both signs a mere allusion (and not a direct description of the nature or characteristics of the goods at issue) to the onomatopoeic sound of the cow. Therefore, as the opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se.

Visually, the signs coincide in their distinctive verbal element, which is the component of the contested sign with a stronger impact. However, they differ in the accent on the vowel of the earlier mark and in the stylisation and green circular background of the contested sign, which is however not particularly striking.

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

Aurally, the pronunciation of the signs coincides in the sound of the sole verbal element of the signs, with the difference highlighted above of the slightly longer sound of the vowel ‘Ū’ of the earlier mark.

Therefore, the signs are aurally highly similar, if not identical

Conceptually, for that part of the public for which neither of the signs has a meaning, since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs. For those who will perceive in both signs an allusion to the onomatopoeic sound of a cow, the signs are conceptually identical.

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

4. 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).

In the present case, the goods are partly dissimilar and partly identical or similar (to at least a low degree) and are directed at the public at large with an average degree of attention. The earlier mark enjoys a normal degree of distinctiveness. The signs are visually similar to at least an average degree, aurally at least highly similar and conceptually identical for those who perceive them as an allusion to the onomatopoeic sound of a cow. For the remaining part of the public, the conceptual comparison is neutral.

Notwithstanding the differences in stylisation of the contested sign and the accent of the ‘Ū’ of the earlier mark, the coincidences in the only two letters of the distinctive verbal element are overwhelming.

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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public and therefore the opposition is partly well founded on the basis of the opponent’s Lithuanian trade mark registration No 37 143 for the word mark ‘MŪ’.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar (to at least a low degree) 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 Lithuanian trade mark registrations:

• No 37 260 for the figurative mark and

• No 37 263 for the figurative mark .

Since these marks contain further figurative elements (namely the stylisation of the letters ‘MŪ’ and the colour red in mark No 37 260) and cover the same scope of goods as the earlier mark already examined above, the outcome cannot be different with respect to the contested goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

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

Sofía SACRISTÁN MARTÍNEZ

Valeria ANCHINI

Manuela RUSEVA

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.