OPPOSITION No B 2 461 112

Sicasal – Indústria e Comércio de Carnes, S.A., 2665 Vila Franca do Rosário, Portugal (opponent), represented by Furtado – Marcas e Patentes, S.A., Avenida Duque de Ávila, 66-7º, 1050-083 Lisboa, Portugal (professional representative)

a g a i n s t

Euroserum, Route de Luxeuil-les-Bains, 70170 Port-Sur-Saone, France (holder), represented by Sodiaal International, 170 Bis Boulevard du Montparnasse, 75014 Paris, France (professional representative).

On 19/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 461 112 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 of international registration designating the European Union No 1 197 118 for the word mark depicted below. The opposition is based on European trade mark registration No 335 406 and Portuguese trade mark registration No 273 753, both for the same figurative mark as depicted below. The opponent invoked Article 8(1)(b) EUTMR.

	SICASALT
Earlier trade marks	Contested sign

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication 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.

For international registrations designating the European Union, the ‘date of publication’ of the contested mark within the meaning of Article 42(2) EUTMR, that is to say for the purposes of establishing the five-year period of use obligation for the earlier mark, is considered to be six months after the first republication of the international registration, which corresponds to the beginning of the opposition period (Article 156 EUTMR in conjunction with Article 152 EUTMR, in the version in force at the time of filing of the opposition). The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The holder requested that the opponent submit proof of use of the trade marks on which the opposition is based.

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

The relevant date (first republication of the contested international registration plus six months) is 04/10/2014. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union and in Portugal from 04/10/2009 to 03/10/2014 inclusive.

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

European trade mark registration No 335 406

Class 29:        Sausage products, charcuterie; meat; meat extracts; meat, preserved and preserves.

Portuguese trade mark registration No 273 753

Class 29:        Meat (fresh, preserved and processed); poultry, not alive.

According to Rule 22(3) EUTMIR, 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 and services in respect of which it is registered and on which the opposition is based.

On 21/09/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 26/11/2015 to submit evidence of use of the earlier trade marks. As requested by the opponent this time limit was then extended until the 26/01/2016. On 26/01/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Several news articles, press releases from the opponent’s website, advertisements, and flyers from various super-markets (Annex I). Some fo this evidence is dated between 2009 and 2014, although most is undated. The material is mostly in Portuguese and some evidence is bilingual (Portuguese and English). Only some of the material refers to concrete goods, e.g. flyers from super-markets, which are, inter alia, meat and processed meat products (sausages, ham, etc.) under the trade mark.
• Stationary (envelopes, paper) depicting the opponent’s name and trade mark (Annex II). The material is not dated and there is no reference to any good.
• Print-outs of the opponent’s website (Annex III). The evidence is in English and refers to the company’s history and its products, namely meat and processed meat products (sausages, ham, etc.). Although undated, in the ‘Archives’ links of the newsletter section of the website the dates January 2012 to January 2015 appear.
• 133 invoices, dated between 20/08/2009 and 01/04/2014 (Annex IV). The invoices are not translated, however, the goods listed in the invoices have article-numbers which appear in the catalogue submitted as Annex V. Furthermore, some invoices refer to meat products like ‘mortadela’, ‘filete’, etc. The mark appears on the invoices.
• An undated catalogue of products sold by the opponent (Annex V). The catalogue is not in the language of proceedings, however, it is clear from the pictures, that the products listed with specific article-numbers are either fresh meat products or processed meat (sausages, ham, etc.). The mark appears as registered.

 

The holder argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR). Taking into account the nature of the documents which have not been translated and are considered relevant for the present proceedings, namely invoices and/or catalogues, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.

The invoices show that the place of use is the European Union and Portugal. This can be inferred from the language of the documents (Portuguese), the currency mentioned (Euro) and some addresses in Spain, France, the United Kingdom, Luxemburg, and Portugal. Therefore, the evidence relates to the relevant territory.

Most of the evidence, in particular most of the invoices, is dated within the relevant period.

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

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, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

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

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only 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 that part of the goods or services.

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

Portuguese trade mark registration No 273 753

Class 29:        Meat (fresh, preserved and processed).

European trade mark registration No 335 406

Class 29:        Sausage products, charcuterie; meat; meat, preserved and preserves.

In particular and as regards the earlier Portuguese trade mark, the evidence, cannot establish any use of the mark regarding poultry, not alive. As regards the earlier European trade mark, no use of the mark regarding meat extracts has been proven.

For the sake of completeness, the Opposition Division notes that, 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).

However, meat extracts cannot be considered to form an objective subcategory of either meat, that is, fresh meat, or sausage products, charcuterie; meat, preserved and preserves, that is, processed meat. Meat extract is highly concentrated meat stock (usually made from beef) which is used to add meat flavour in cooking and to make broth for drinking. Although made from meat, it clearly serves other purposes. Consequently, it does not fall as a subcategory under any of the goods for which use has been proven.

Therefore, as regards earlier European trade mark registration No 335 406 the Opposition Division will only consider the abovementioned sausage products, charcuterie; meat; meat, preserved and preserves 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.

1. The goods

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

European trade mark registration No 335 406

Class 29:        Sausage products, charcuterie; meat; meat, preserved and preserves.

Portuguese trade mark registration No 273 753

Class 29:        Meat (fresh, preserved and processed).

The contested goods are the following:

Class 1:        Salt and salt substitutes for industrial use; salts and salt substitutes used as emulsifiers in the manufacture of processed cheese.

Class 29:        Milk and dairy products; ingredients of dairy or vegetable origin used in the food industry.

Class 30:        Salt and salt substitutes for food.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to 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 1

The contested salt and salt substitutes for industrial use; salts and salt substitutes used as emulsifiers in the manufacture of processed cheese are chemical products for use in the (food) industry. Contrary to the opponent’s opinion, they have nothing in common with the opponent’s goods which are fresh meat and/or processed or preserved meat and meat products. The fact that salt is used to preserve meat cannot alter this finding. The goods have different producers, distribution channels and target different publics. They are neither complementary nor in competition. Therefore, these goods are dissimilar.

Contested goods in Class 29

The contested milk and dairy products; ingredients of dairy or vegetable origin used in the food industry are milk and milk products or its substitutes of vegetable origin. The only point in common to the opponent’s goods which are fresh meat and/or processed or preserved meat and meat products is the fact that they are foodstuff in a broader sense. However, this is not sufficient to establish any similarity between the goods. They usually have different producers. Contrary to the opponent’s opinion, the fact that both may be sold in the same place, e.g. super markets or grocery stores, cannot alter this finding. They are neither complementary nor in competition. Therefore, these goods are dissimilar.

Contested goods in Class 30

The contested salt and salt substitutes for food are used to preserve or add flavour to food. The only point in common to the opponent’s goods which are fresh meat and/or processed or preserved meat and meat products is the fact that they are foodstuff in a broader sense. However, this is not sufficient to establish any similarity between the goods. They usually have different producers and are neither complementary nor in competition. Contrary to the opponent’s opinion, the fact that both may be sold in the same place, e.g. super markets or grocery stores, and that salt is used to preserve meat cannot alter this finding. Therefore, these goods are dissimilar.

For the sake of completeness it has to be noted, that a certain degree of similarity of the contested goods could only be established in relation to meat extracts which serve as a kind of condiment as stated above. However, for those goods no use has been proven, as seen above.

2. 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 are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

COSTS

According to Article 85(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 holder in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Lynn BURTCHAELL

Konstantinos MITROU

Martin EBERL

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.