OPPOSITION No B 2 705 583

Orkla Confectionery & Snacks Finland Ab, Sundsvägen 420, 22410 Godby, Finland (opponent), represented by Berggren Oy, Eteläinen Rautatiekatu 10 A, 00100 Helsinki, Finland (professional representative)

a g a i n s t

Richard Dai, 11 allée Diane de Poitiers, 75019 Paris, France (applicant)

On 10/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 705 583 is partially upheld, namely for the following contested goods:

Class 29: Fruits all being preserved, dried or cooked; fruit desserts.

Class 30: Prepared meals and snack foods consisting primarily of cereals; drinking chocolate; bread and bread filled products; filled buns; fruit pies; ice cream; bakery goods; biscuits, bread, cakes, cookies, pastries, confectionery, desserts.

2.        European Union trade mark application No 15 208 887 is rejected for all the above goods. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 208 887. The opposition is based on the following earlier rights and grounds:

	Earlier trade mark registration		Article
1)	Finnish trade mark No 29 027	Panda	8(1)(b) EUTMR 8(5) EUTMR
2)	European Union trade mark No 8 684 961	PANDA	8(1)(b) EUTMR
3)	European Union trade mark No 10 398 618		8(1)(b) EUTMR

1. 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 Finnish trade mark No 29 027.

1. The goods and services

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

Class 30: Confectionery, chocolate and liquorice.

The contested goods and services are the following:

Class 29: Prepared meals and snack foods consisting primarily of meat, fish, poultry, game, fruit and/or vegetables; foods prepared from meat, pork, fish and poultry products; prepared meat; fish, poultry, game; fruits and vegetables all being preserved, dried or cooked; potato fries and potato chips; milk, milk beverages; yogurts; desserts, namely artificial milk based desserts, dairy desserts, fruit desserts; pickles.

Class 30: Prepared meals and snack foods consisting primarily of rice, noodles, cereals, and/or sauces; coffee, tea, cocoa, coffee substitutes, drinking chocolate; bread and bread filled products; edible sandwiches; filled buns; sauces; fruit pies; ice cream; salad dressings; bakery goods; biscuits, bread, cakes, cookies, pastries, confectionery, desserts; mustard, sauces, seasonings.

Class 35: Business management and consultancy in the operation of restaurants and establishments in providing food; restaurants' business assistance, management and administrative services; restaurants' business consultancy and advisory services relating to franchising of restaurants; business information and assistance in the establishment and operation of restaurants; services rendered or associated with franchising restaurants and other establishments or facilities for the provision of food and drink.

Class 43: Restaurant services; bar, café, cafeteria and catering services; provision of food and drink; services rendered or associated with operating restaurants and other establishments or facilities for the provision of food and drink.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 29

The contested fruits being cooked, preserved or dried refer to fruit treated in a particular way so that it can be kept for a long time without going bad. The contested fruit desserts can be fruit-based products. When comparing with the opponent’s confectionery in Class 30 they can coincide in the producer, end user and distribution channels. Therefore, they are considered to be similar to a low degree.

However, as regards the remaining contested goods, namely prepared meat; fish, poultry, game; vegetables all being preserved, dried or cooked; milk, milk beverages; yogurts; pickles they are foodstuffs of animal and plant origin. The contested prepared meals and snack foods consisting primarily of meat, fish, poultry, game, fruit and/or vegetables; foods prepared from meat, pork, fish and poultry products; potato fries and potato chips; desserts, namely artificial milk based desserts, dairy desserts are prepared meals made from these foodstuffs or animal and plant origin. These contested goods have nothing in common with the opponent’s goods in Class 30, which are confectionery, chocolate and liquorice, which are sweet or salty snacks. Although it is true that some of the contested goods (for example, milk) can be used as ingredients of the opponent’s goods, it is clear that the mere fact that one ingredient is needed for the preparation of a foodstuff will generally not be sufficient in itself to show that the goods are similar, even though they all fall under the general category of foodstuffs (judgment of 26/10/2011, T-72/10, Naty’s, EU:T:2011:635, § 35-36). The goods under comparison do not satisfy the same specific nutritional needs and are usually eaten on different occasions. They have a different nature and producers and they target different end users. Further, even if they may be sold through the same distribution channels, they cannot be found in the same shelves, sections or departments of supermarkets or groceries. In addition, they are neither in competition with each other nor complementary. Therefore, the contested goods are considered to be dissimilar to the opponent’s goods in Class 30.

Contested goods in Class 30

Confectionery is identically contained in both lists of goods.

The contested drinking chocolate is included in the broad category of the opponent’s chocolate. Therefore, these goods are identical.

The contested prepared meals and snack foods consisting primarily of cereals are similar to the opponent’s confectionery as they have the same purpose. They can coincide in producer, end user and distribution channels. Furthermore, they are in competition.

The contested bread and bread filled products; bakery goods; bread are similar to a low degree to the opponent’s confectionery as they can coincide in producer, end user and distribution channels.

The contested prepared meals and snack foods consisting primarily of rice, noodles, and/or sauces; coffee, tea, cocoa, coffee substitutes, edible sandwiches; sauces; salad dressings; mustard, sauces, seasonings are dissimilar to the opponent’s goods. They are neither in competition nor complementary. They have a different nature and purpose.

The contested filled buns; fruit pies; ice cream; biscuits, cakes, cookies, pastries, desserts are similar to the opponent’s confectionery. These goods may have the same producers, consumers and distribution channels. Furthermore, they are in competition.

Contested services in Class 35

The remaining contested business management and consultancy in the operation of restaurants and establishments in providing food; restaurants' business assistance, management and administrative services; restaurants' business consultancy and advisory services relating to franchising of restaurants; business information and assistance in the establishment and operation of restaurants; services rendered or associated with franchising restaurants and other establishments or facilities for the provision of food and drink are services consisting of providing:

–        assistance to companies in managing their business by setting out the strategy and/or direction of the company;

• assistance to companies in the performance of business operations and, therefore, the interpretation and implementation of the policy set by an organisation’s board of directors.

Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs, the contested services and all the opponent’s goods are provided by very different types of companies (e.g. food producers versus advertising agencies) and they target different consumers (on the one hand, the general public looking for foodstuffs and, on the other, business owners and operators). Moreover, they are neither in competition with nor complementary to each other. Therefore, they are dissimilar.

Contested services in Class 43

The contested restaurant services; bar, café, cafeteria and catering services; provision of food and drink; services rendered or associated with operating restaurants and other establishments or facilities for the provision of food and drink are services for the provision of food and drinks in Class 43. The mere fact that food and drinks are consumed in a restaurant is not sufficient reason to find similarity between them (judgment of 09/03/2005, T-33/03, Hai, EU:T-2005:89, § 45 and decision of 20/10/2011, R 1976/2010-4, THAI SPA / SPA et al., § 24-26). They contested services differ in nature, producer and method of use. Therefore, these services are dissimilar to the opponent’s goods in Class 30.

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 various degrees) are directed at the public at large. The degree of attention is below average, due to price and the frequent purchase of these goods.

3. The signs

Panda	PANDA GOURMET
Earlier trade mark	Contested sign

The relevant territory is Finland.

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 word ‘PANDA’, contained in both marks, will be understood as a kind of bear by the relevant public. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

The element ‘GOURMET’, contained in the contested sign, will be understood by the relevant public as an expression for ‘very high quality’ in relation to foodstuff and drinks or to a person who enjoys eating high quality food. It is descriptive and, therefore, the word ‘PANDA’ of the contested sign is much more distinctive than the word ‘GOURMET’.

The earlier mark contains only one element, therefore it has no elements that could be considered clearly more distinctive or dominant (visually eye-catching) than other elements.

The contested sign is a word mark, so that it has no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the word ‘PANDA’. Thus, the earlier sign is completely included in the contested trade mark as its only distinctive element. The only additional element of the contested sign is the descriptive word ‘GOURMET’. Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the syllables ‛PAN-DA’, present identically in both signs. The pronunciation differs in the sound of the non-distinctive word ‛GOURMET’ of the contested sign. Therefore, the signs are phonetically similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by (the elements of) the marks. The earlier mark refers to a specific type of bear, while the contested mark refers to the very same type of bear combined with a laudatory reference about the quality of the relevant goods and services. As the signs will be associated with a similar meaning, namely a specific kind of bear, the signs are conceptually similar to a high degree.

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

4. Distinctiveness of the earlier mark

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

According to the opponent the earlier trade mark has a reputation in Finland in connection with all the goods for which it is registered, namely confectionery, chocolate and liquorice in Class 30. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

1. Market survey conducted by the research company Taloustutkimus Oy on 07/06/2013. 1161 participants aged 15 to 64 years took part in this survey. The spontaneous recall of the mark ‘PANDA’ has been 66% in 2010, 74% in 2011, 72% in 2013 and 73% in 2013 for liquorice. The results are presented by number and profile of the interviewees. The survey was carried out by contacting the interviewees through the internet panel of the research company. No indications have been made as to the questions asked, the order and whether or not they were shown the trade mark ‘PANDA’ or other trade marks before, during or after answering the questions.
2. Information from the opponent’s webpage concerning the history of the ‘PANDA’ trade mark and brand from 1920 to 2013. According to this, in 1933 the production of Panda liquorice begins and in 1952 the Panda brand is born.

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

As regards the information concerning the history of the earlier mark (evidence 2) it is to be noted that this evidence derives from the opponent and, therefore, has just a limited probative value. Furthermore, it contains no indication about the trade mark awareness by the relevant public, the market share held by the opponent or the intensity of use of the earlier mark.

Opinion polls and market surveys are the most suitable means of evidence for providing information about the degree of knowledge of the mark. The probative value of opinion polls and market surveys is determined by the status and degree of independence of the entity conducting it, by the relevance and the accuracy of the information it provides, and by the reliability of the applied method.

More particularly, in evaluating the credibility of an opinion poll or market survey, the Office needs to know the following.

1. Whether or not it has been conducted by an independent and recognised research institute or company, in order to determine the reliability of the source of the evidence (R 540/2013-2, Shape of a bottle (3D), § 49).

2. The number and profile (sex, age, occupation and background) of the interviewees, in order to evaluate whether the results of the survey are representative of the different kinds of potential consumers of the goods in question.

3. The method and circumstances under which the survey was carried out and the complete list of questions included in the questionnaire. It is also important to know how and in what order the questions were formulated, in order to ascertain whether the respondents were confronted with leading questions.

4. Whether the percentage reflected in the survey corresponds to the total amount of persons questioned or only to those who actually replied.

Unless the above indications are present, the results of a market survey or opinion poll should not be considered of high probative value, and will not in principle be sufficient on their own to support a finding of reputation.

In the present case, the market survey submitted by the opponent (evidence 1) has been conducted by an independent and recognised research institute or company. It indicates the number and profile of the interviewees. But the information regarding the method and circumstances under which it was carried out is insufficient. The survey merely indicates that the interviewees were contacted through the internet panel of the research company. It gives no indication as to the questions asked, the order and whether or not they were shown the trade mark ‘PANDA’ or other trade marks before, during or after answering the questions, making it impossible to determine whether the questions were really open and unassisted.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark is considered to be average.

5. Global assessment, other arguments and conclusion

The goods are partly identical, partly similar (to various degrees) and partly dissimilar. The contested services are dissimilar to the opponent’s goods. Enhanced distinctiveness or reputation of the earlier mark was not proven; therefore, it is considered to have an average degree of distinctiveness. The degree of attention of the relevant public is below average.

The signs are visually, aurally and conceptually highly similar. The earlier mark is completely contained in the contested sign as its most distinctive word. The differentiating word of the contested sign is weak and not able to counterbalance the similarities between the signs.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Finnish-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s Finnish trade mark No 29 027.

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

The rest of the contested goods and services 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 and services cannot be successful.

The opponent has also based its opposition on the following earlier trade marks:

2)	European Union trade mark No 8 684 961	PANDA
3)	European Union trade mark No 10 398 618

The earlier mark 2) is identical to the one which has been compared and covers a slightly narrower scope of goods. The earlier mark 3) is less similar to the contested mark because it is a figurative mark with a specific typeface and a background and covers a slightly narrower scope of goods. The outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

As the opposition was only partially successful, the other ground will have to be examined, too.

2. REPUTATION – ARTICLE 8(5) EUTMR

The opponent has claimed reputation in relation to its earlier Finnish trade mark No 29 027.

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

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41).

1. Reputation of the earlier trade mark

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

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation.

Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected on this ground.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) 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 only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Sigrid DICKMANNS

Julia SCHRADER

Swetlana BRAUN

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.