OPPOSITION Nо B 3 062 837

"M Tabako" Ood, ul. "Pencho Slaveykov" N°6, 4002 Plovdiv, Bulgaria (opponent),

 

a g a i n s t

 

bcm Invest GmbH, Am Kinsingwald 3, 94121 Salzweg, Germany (applicant), represented by Lichtnecker & Lichtnecker, Im Schlosspark Gern 2, 84307 Eggenfelden, Germany (professional representative).

On 13/11/2020, the Opposition Division takes the following

DECISION:

1.	Opposition No B 3 062 837 is rejected in its entirety.

2.	The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 889 418 for the word mark 'CARDEL'. The opposition is based on:

1. European Union trade mark registration No 9 327 024 for the word mark 'CARTEL'

2. Bulgarian trade mark registration No 73 675, for the word mark 'CARTEL'

3. International trade mark registration No 1 075 192 designating Croatia and Sweden, for the word mark 'CARTEL'

4. Italian trade mark registration No 2016 000 009 022, for the word mark 'CARTEL'

In relation to the above trade mark registrations the opponent invoked Article 8(1)(b) and 8(5) EUTMR.

The opposition is also based on the following well-known marks:

5. Well-known mark in the territory of Denmark, Belgium, Bulgaria, Austria, Croatia, Romania, Portugal, Cyprus, Czech Republic, Hungary, Poland, Lithuania, Germany, Slovenia, Ireland, Malta, Estonia, Italy, Sweden, Slovakia, Latvia, Greece, Spain, Finland, United Kingdom, Netherlands, Luxembourg, France, No 9 327 024, for the word 'CARTEL', for goods in Class 34

6. Well-known mark in the territory of Bulgaria, No 73 675, for the word ‘CARTEL’ for goods in classes 30 and 34

7. Well-known mark in the territory of Croatia, No 1 075 192, for the word ‘CARTEL’ for goods in Class 34

8. Well-known mark in the territory of Sweden, No 1 075 192, for the word ‘CARTEL’ for goods in Class 34

9. Well-known mark in the territory of Italy, No 2016 000 009 022, for the word ‘CARTEL’ for goods in Class 30

10. Well-known mark in the territory of Czech Republic, Austria, Belgium, Bulgaria, Luxembourg, Malta, Croatia, Netherlands, Poland, Hungary, Cyprus, Ireland, Germany, Portugal, Slovakia, Slovenia, Sweden, Denmark, Estonia, Lithuania, Italy, Spain, Greece, Romania, United Kingdom, Finland, Latvia, France, for the word ‘CARTEL’, for goods and services in Classes 3, 4, 5, 6, 8, 9, 14, 16, 18, 20, 25, 26, 30, 33, 34, 35, 36, 38, 39 and 43.

In relation to the above earlier well-known marks the opponent invoked Article 8(2)(c) in conjunction with Article 8(1)(b) EUTMR

Additionally, the opposition was based on non-registered sign ‘CARTEL’ used in the course of trade in Austria, Belgium, United Kingdom, Bulgaria, Cyprus, Czech Republic, Germany, Malta, Slovenia, Denmark, Estonia, Portugal, Slovakia, the EU, Spain, Romania, Greece, Latvia, Finland, Italy, Ireland, Luxembourg, Lithuania, France, Croatia, Netherlands, Hungary, Sweden, Poland, in relation to which the opponent invoked Article 8(4) 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 earlier European Union trade mark registration No 9 327 024.

The request was filed 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.

On 09/12/2019 the opponent was given two months to file the requested proof of use.

The opponent did not submit any evidence concerning the use of the earlier European Union trade mark registration, on which the opposition is based. It did not argue that there were proper reasons for non-use either.

According to Article 10(2) EUTMDR, if the opposing party does not provide such proof before the time limit expires, the Office will reject the opposition.

Therefore, the opposition must be rejected pursuant to Article 47(2) EUTMR and Article 10(2) EUTMDR, as far as this earlier right is concerned.

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 and services

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

International trade mark registration No 1 075 192 designating Croatia and Sweden

Class 34: Cigarettes; tobacco, tobacco products, smokers' articles; lighters for smokers, matches.

In relation to the two remaining trade mark registrations (Bulgarian and Italian), first of all it must be observed that in the notice of opposition of 25/08/2018 the opponent accepted that the necessary information for the earlier trade marks is imported from the relevant online official database, accessible through TMview, and that this source is used for substantiation purposes without prejudice to its right or obligation to provide any additional information that may be necessary to comply with the substantiation requirements of Article 7(2) and (4) EUTMDR.

As regards the earlier Bulgarian registration, the Opposition Division became aware that according to the TMview database and the official database of the Patent Office of Bulgaria, the original Bulgarian list of goods of the earlier mark contains less terms than the translation provided by the opponent in the notice of opposition. In each class indicated in the notice of opposition, the opponent included the Bulgarian version of the list of goods, the draft English translation and the final English translation. The lists are separated with hyphens.

As regards the earlier Italian registration, likewise, the Opposition Division became aware that according to the TMview database and the official database of UIBM (Italian Patent and Trademark Office), the original list of goods of the earlier mark contains less terms than the translation provided by the opponent in the notice of opposition. The opponent quoted the Italian version of class title of Class 30, to which the earlier goods belong and, after a hyphen, its English translation, whereas the protection for this mark was granted only for ‘cacao; caffè; tè; Caffè artificiale’, that is ‘cacao; coffee; tea; artificial coffee’.

According to the EUIPO Guidelines ‘where a clearly incorrect translation is detected in the list of goods and services covered by the earlier national or international mark that prevents the Office from carrying out a comparison of goods and services, the opponent may be required under Article 26 EUTMIR to submit a certificate from a sworn or official translator confirming that the translation corresponds to the original; alternatively, in clear-cut cases, the Office may, for the purposes of the decision, replace a clearly incorrect translation of a certain term by a correct translation, adding an explanation to that effect’ .

The Opposition Division considers that in present case the mistakes are obvious and it is clear that the correct translations should read as follows:

Bulgarian trade mark registration No 73 675

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; flour and preparations made from cereals, bread, pastry and confectionery, waffles; chocolate desserts; candy; mixture of cereal products, nuts, dried fruit (muesli), honey, molasses; yeast, baking powder; salt, mustard; vinegar, sauces (spices); ice.

Italian trade mark registration No 2016 000009022

Class 30: Cacao; coffee; tea; artificial coffee.

Therefore, these goods will be taken into account for the purpose of the examination of the present case.

The contested goods and services are the following:

Class 3: Perfume; Perfumery; Make-up preparations; Emollient preparations [cosmetics]; Soaps, cosmetics.

Class 9: Sunglasses; Spectacles [optics]; Cases for spectacles and sunglasses; Frames for spectacles and sunglasses; Chains for glasses and sunglasses; Straps for spectacles and sunglasses.

Class 14: Jewels; Ornaments [jewellery, jewelry (Am.)]; Clocks; Wristwatches; Chronographs [watches]; Key rings (trinkets or fobs); Bracelets; Rings (jewelry); Earrings; Piercing jewellery.

Class 18: Leather and imitations of leather, not included in other classes; Casual bags; Purses; Handbags; Trunks and travelling bags; Overnight bags, Briefcases, wallets; cases; Cardholders; Cosmetic purses; Umbrellas; Parasols; Walking sticks.

Class 35: Retail and wholesale services, Also via the Internet, In the field of perfumes, perfumery products, Makeup, Beauty care cosmetics, Soaps, Body and beauty care products, sun glasses, eyeglasses, cases for spectacles and sunglasses, frames for spectacles and sunglasses, chains for spectacles and for sunglasses, Straps for spectacles and sunglasses; Retail and wholesale services, Also via the Internet, In the field of jewellery, Jewellery, Clocks and watches, wristwatches, Chronographs, Key rings (trinkets or fobs), armbands, rings (jewellery), Earrings, Piercing jewellery, Leather, imitations of leather, Bags, Purses, Handbags, trunks [luggage], portfolio cases, Wallets and pocket wallets, etuis, card holders, Toiletry pouches; Retail and wholesale services, Also via the Internet, In the field of umbrellas, Parasols, canes, Ready-made clothing, T-shirts, Pullovers, Hoodies, long-sleeved shirts, Jackets, Garments for babies, Headgear, Caps, bonnets, Baseball caps, Peaked caps, Scarves (clothing), Neckties, Bow ties (clothing), belts (for wear), Footwear, Shirts; Arranging of commercial and business contacts, Also via the Internet, In the field of perfumes, perfumery products, Makeup, Beauty care cosmetics, Soaps, Body and beauty care products, sun glasses, eyeglasses, cases for spectacles and sunglasses, frames for spectacles and sunglasses; Arranging of commercial and business contacts, Also via the Internet, In the fields of chains for spectacles and sunglasses, cords for spectacles and sunglasses, Jewels, Jewellery, Clocks and watches, wristwatches, Chronographs, Key rings (trinkets or fobs), armbands, rings (jewellery), Earrings, Piercing jewellery, Leather, imitations of leather, Bags, Purses, Handbags, trunks [luggage], portfolio cases, Wallets and pocket wallets, etuis, card holders, Toiletry pouches; Arranging of commercial and business contacts, Also via the Internet, In the field of umbrellas, Parasols, canes, Ready-made clothing, T-shirts, Pullovers, Hoodies, long-sleeved shirts, Jackets, Garments for babies, Headgear, Caps, bonnets, Baseball caps, Peaked caps, Scarves (clothing), Neckties, Bow ties (clothing), belts (for wear), Footwear, Shirts.

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 Classes 3, 9, 14 and 18

The contested goods cover cosmetics, toiletries and perfumes (Class 3), glasses, sunglasses and their accessories (Class 9), jewelry, ornaments, chronometric instruments and key-rings (Class 14), leather, its imitation and goods made thereof as well as umbrellas, parasols and waking sticks (Class 18).

The earlier marks cover foodstuff in Class 30 and cigarettes; tobacco, tobacco products and smokers' articles in Class 34.

These goods have no factors in common but the fact that in majority they are mass consumption goods directed at the same, general public. This fact alone does not suffice to establish any degree of similarity, as the earlier goods and contested goods have different natures, purposes and methods of use. They are neither in competition nor complementary, in the sense that one is indispensable for the use of the other. Usually they have different producers and distribution channels. Therefore, they are dissimilar.

Contested services in Class 35

The contested services cover retail and wholesale, also via the Internet, of the above listed goods in Classes 3, 9, 14 and 18, as well as arranging commercial and business contact in the field of these goods.

They have no factors in common with the earlier goods. They differ in nature, purpose and method of use. They are neither in competition nor complementary, in the sense that one is indispensable for the use of the other. They have different commercial origins and relevant publics. Therefore, they are dissimilar.

b) Conclusion

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

REPUTATION — ARTICLE 8(5) EUTMR

The opponent claimed that the earlier Bulgarian trade mark registration No 73 675, international trade mark registration No 1 075 192 designating Croatia and Sweden and Italian trade mark registration No 2016 000 009 022, all for the word mark ‘CARTEL’, are reputed in their respective territories.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 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 will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

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

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Article 7(2)(f) EUTMDR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case, the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade marks.

On 14/09/2018 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit was further extended and expired on 08/10/2019.

 

The opponent did not submit any evidence concerning the reputation of the trade marks on which the opposition is based.

 

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

 

EARLIER WELL-KNOWN MARKS – ARTICLE 8(2)(c) EUTMR IN CONJUNCTION WITH ARTICLE 8(1)(b) EUTMR

The opponent based its opposition on the following earlier well-known marks:

5. Well-known mark in the territory of Denmark, Belgium, Bulgaria, Austria, Croatia, Romania, Portugal, Cyprus, Czech Republic, Hungary, Poland, Lithuania, Germany, Slovenia, Ireland, Malta, Estonia, Italy, Sweden, Slovakia, Latvia, Greece, Spain, Finland, United Kingdom, Netherlands, Luxembourg, France, No 9 327 024, for the word 'CARTEL' for goods in Class 34

6. Well-known mark in the territory of Bulgaria, No 73 675, for the word ‘CARTEL’ for goods in classes 30 and 34

7. Well-known mark in the territory of Croatia, No 1 075 192, for the word ‘CARTEL’ for goods in Class 34

8. Well-known mark in the territory of Sweden, No 1 075 192, for the word ‘CARTEL’ for goods in Class 34

9. Well-known mark in the territory of Italy, No 2016 000 009 022, for the word ‘CARTEL’ for goods in Class 30

10. Well-known mark in the territory of Czech Republic, Austria, Belgium, Bulgaria, Luxembourg, Malta, Croatia, Netherlands, Poland, Hungary, Cyprus, Ireland, Germany, Portugal, Slovakia, Slovenia, Sweden, Denmark, Estonia, Lithuania, Italy, Spain, Greece, Romania, United Kingdom, Finland, Latvia, France, for the word ‘CARTEL’, for goods and services in Classes 3, 4, 5, 6, 8, 9, 14, 16, 18, 20, 25, 26, 30, 33, 34, 35, 36, 38, 39 and 43.

According to Article 8(2)(c) EUTMR, for the purposes of Article 8(1) EUTMR ‘earlier trade marks’ means:

marks which, on the date of application for registration of the EU trade mark, or, where appropriate, of the priority claimed in respect of the application for registration of the EU trade mark, are well known in a Member State, in the sense in which the words ‘well known’ are used in Article 6bis of the Paris Convention.

Article 8(2)(c) EUTMR, in general, defines the earlier trade marks only ‘for the purposes of paragraph 1’ and, therefore, does not provide an independent relative ground for refusal. Therefore the grounds for refusal and opposition are those provided by Article 8(1) EUTMR.

In order for Article 8(2)(c) EUTMR in conjunction with Article 8(1) EUTMR to be applicable, the following has to be established:

 the earlier marks were well-known in the relevant territory on the date when the contested EUTM application was filed

and in conjunction with Article 8(1)(b) EUTMR:

 because of identity or similarity between the contested mark and the earlier well-known marks, and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the relevant territory.

These conditions are cumulative. Therefore, where a mark does not satisfy one of these conditions, the opposition based on the well-known trade marks under Article 8(1)(b) EUTMR in conjunction with Article 8(2)(c) EUTMR cannot succeed.

With regard to the first condition, the opponent needs to prove, before the end of the substantiation period, that it is the owner of the well-known marks and that these marks became well-known to the relevant public, at least, in a substantial part of the relevant territory before the filing date of the contested trade mark, which is 18/04/2018.

Even though the terms ‘well-known’ (a traditional term used in Article 6bis of the Paris Convention) and ‘reputation’ denote distinct legal concepts, there is a substantial overlap between them, as shown by a comparison of the way in which well-known marks are defined in WIPO Recommendations with the way reputation was described by the Court in its judgment of 14/09/1999, C‑375/97, Chevy, EU:C:1999:408, § 22 (concluding that the different terminology is merely a ‘…nuance, which does not entail any real contradiction…’).

In practical terms, the threshold for establishing whether a trade mark is well-known or enjoys reputation will usually be the same. Therefore, it is not unusual for a mark, which has acquired well-known character to have also reached the threshold for marks with reputation, and vice versa, given that in both cases the assessment is principally based on quantitative considerations regarding the degree of knowledge of the mark among the public, and that the thresholds required for each case are expressed in quite similar terms (‘known or well-known at the relevant sector of the public ‘for well-known marks’, as against ‘known by a significant part of the relevant public’ as regards marks with reputation’).

This has also been confirmed by case-law. In its judgment of 22/11/2007, C‑328/06, Fincas Tarragona, EU:C:2007:704, the Court qualified the notions of ‘reputation’ and ‘well-known’ as kindred notions (‘notions voisines’), underlining in this way the substantial overlap and relationship between them (§ 17).

Therefore, in analysing whether or not the earlier marks are well known, the criteria established by the Court as regards marks with reputation can be validly applied. In this regard, the Court concluded that in order to satisfy the requirement of reputation, the earlier marks must be known by a significant part of the public concerned for the goods or services covered by those trade marks. In making such an assessment, all the relevant factors must be considered and, in particular, the market share held by the trade marks, the intensity, geographic extent and duration of its use, and the size of investment made by the undertaking in promoting it (14/09/1999, C‑375/97, Chevy, EU:C:1999:408, § 22, 23, 25, 27; 25/05/2005, T‑67/04 Spa-Finders, EU:T:2005:179, § 34).

In the present case, the notice of opposition was not accompanied by any evidence of the alleged well-known character of the earlier trade marks.

On 14/09/2018 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit was further extended and expired on 08/10/2019.

 

The opponent did not submit any evidence concerning the well-known character of the trade marks on which the opposition is based.

Consequently, one of the necessary conditions for Article 8(2)(c) EUTMR in conjunction with Article 8(1)(b) EUTMR to be applicable is not fulfilled, namely that the earlier marks are well known in the relevant territories.

The opposition must, therefore, be rejected insofar as it is based on Article 8(2)(c) in conjunction with Article 8(1)(b) EUTMR.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR

 

The opposition was based on non-registered trade mark ‘CARTEL’ used in the course of trade in Austria, Belgium, United Kingdom, Bulgaria, Cyprus, Czech Republic, Germany, Malta, Slovenia, Denmark, Estonia, Portugal, Slovakia, the EU, Spain, Romania, Greece, Latvia, Finland, Italy, Ireland, Luxembourg, Lithuania, France, Croatia, Netherlands, Hungary, Sweden, Poland.

 

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

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

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

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

According to Article 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 will be 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 present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Article 7(2) EUTMDR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In the present case, the notice of opposition was not accompanied by any evidence of use of the earlier sign in the course of trade.

On 14/09/2018 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit was further extended and expired on 08/10/2019.

The opponent did not submit any evidence of use in the course of trade of the earlier sign on which the opposition is based.

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

COSTS

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

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

 

 

The Opposition Division

 

 

Anna BAKALARZ

Anna ZIÓŁKOWSKA

Holger Peter KUNZ

 

 

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.