OPPOSITION No B 2 624 453

Young’s Seafood Limited, Ross House, Wickham Road, Grimsby DN31 3SW, United Kingdom (opponent), represented by Urquhart-Dykes & Lord LLP, Arena Point, Merrion Way, Leeds LS2 8PA, United Kingdom (professional representative)

a g a i n s t

Hikari Holdings L.C. Limited Liability Company, Flat A, 15 Claverton Street, London SW1V 3AY, United Kingdom (applicant).

On 05/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 624 453 is partially upheld, namely for the following contested services:

Class 35:        Retail services and wholesale shops and via global computer networks of vegetables dried, cooked and canned, fruits and vegetables, dried and preserved fruit, edible nuts, edible oils and fat.

2.        European Union trade mark application No 14 565 014 is rejected for all the above services. 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 14 565 014. The opposition is based on European Union trade mark registration No 685 420, United Kingdom trade mark registrations No 1 556 269, No 2 504 496, No 2 604 516 and No 2 627 279 and the United Kingdom and Irish non-registered trade marks ‘YOUNG’S’. The opponent invoked Article 8(1)(b) EUTMR in relation to all of the registered trade marks and Article 8(4) EUTMR in relation to the non-registered trade marks.

PRELIMINARY REMARKS

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, 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.

In this case, the applicant did not request that the opponent submit proof of use, so the Opposition Division will not examine the proof of use submitted by the opponent.

IDENTIFICATION OF THE EARLIER MARKS/RIGHTS

Identification elements are to be looked for not only in the notice of opposition, but also in annexes or other documents filed together with the opposition or any documents submitted within the opposition period. The Irish non-registered trade mark ‘YOUNG’S’ was not identified by the opponent until 22/08/2016, which means that it was identified outside the opposition period so the Opposition Division will not take into account this earlier right.

SUBSTANTIATION OF UNITED KINGDOM TRADE MARK REGISTRATIONS No 2 504 496, No 2 604 516 and No 2 627 279

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall 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 Rule 19(1) EUTMIR, the Office shall 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 Rule 19(2) EUTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of its earlier marks or earlier rights, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the present case, the notice of opposition was not accompanied by any evidence as regards United Kingdom trade marks No 2 504 496, No 2 604 516 and No 2 627 279 on which the opposition is based.

On 17/02/2016, the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit was extended at the opponent’s request until 22/08/2016.

The opponent did not submit any evidence concerning the substantiation of earlier United Kingdom trade marks No 2 504 496, No 2 604 516 and No 2 627 279.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition shall be rejected as unfounded.

Therefore, United Kingdom trade marks No 2 504 496, No 2 604 516 and No 2 627 279 were not substantiated within the specified deadline.

The opposition will proceed on the basis of European Union trade mark application No 685 420 and United Kingdom trade mark registration No 1 556 269.

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 European Union trade mark application No 685 420.

1. The goods and services

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

Class 29:        Fish, fish fillets, breaded and battered fish, fish pies, prepared meals made from fish and seafood products; crustacea; chips and potato products; dried, cooked and preserved fruits and vegetables; edible oils and fats; all included in class 29.

During the adversarial phase of the proceedings, the applicant limited the list of goods and services specified in the application. The opponent was duly informed of this limitation and, in its communication of 31/03/2016, it maintained its opposition.

Accordingly, the contested goods and services, after the limitation, are the following:

Class 5:        Antioxidant food supplements; tonics; bicarbonate of soda for pharmaceutical purposes; salts for medical purposes; alkaline iodides for pharmaceutical purposes; Pharmaceutical and veterinary products; food and dietetic substances adapted for medical or veterinary use; baby food; food supplements for humans and animals.

Class 35:        Advertising; business management; business administration; office functions, retail services and wholesale shops and via global computer networks of antioxidant food supplements, tonics, bicarbonate of soda for pharmaceutical purposes, salts for medical purposes, alkaline iodides for pharmaceutical purposes, pharmaceutical and veterinary products, food and dietetic substances adapted for medical or veterinary use, baby food, food supplements for humans and animals; retail services and wholesale shops and via global computer networks of food snacks based on vegetables and legumes, concentrated juices of vegetable for food, vegetables and dried legumes, cooked and canned, spreadable jellies, jams, compotes, fruits and vegetables, snack food mixes composed of dried fruit and processed nuts, dried and preserved fruit, edible nuts, edible oils and fats.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be 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 5

The contested antioxidant food supplements tonics, bicarbonate of soda for pharmaceutical purposes, alkaline iodides for pharmaceutical purposes, pharmaceutical and veterinary products, food and dietetic substances adapted for medical or veterinary use, food supplements for humans and animals are, in general, drugs or substances used for treating, preventing or alleviating the symptoms of diseases or injuries for human beings or animals. The opponent’s goods are foodstuffs or food-related goods, such as ingredients for preparing food. The goods in question have different purposes (medical, curative, therapeutic versus nutritive) and are not likely to be manufactured by the same producers, marketed through the same distribution channels or placed on the same shelves in supermarkets; indeed, the contested goods are mainly sold in pharmacies and specialist health care shops, in contrast to the opponent’s goods, which are sold in supermarkets and other food outlets. Consequently, all these contested goods in Class 5 are dissimilar to the opponent’s goods.

The opponent’s goods are foodstuffs consumed on a daily basis whereas the contested baby food comprises specific products intended for the nutrition of babies and of babies with special dietetic needs. Their natures are different and the goods also have different relevant publics and distribution channels, insofar as baby food is usually offered in pharmacies or in baby and/or dietetic sections of stores separate from where the opponent’s goods are stocked. Furthermore, the goods will most likely originate from different manufacturers and, taking into account the fact that they target people with different nutritional needs, they have different purposes (medical, curative, therapeutic versus nutritive) and will not be in competition with each other. The goods are, therefore, dissimilar.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested retail services and wholesale shops and via global computer networks of vegetables dried, cooked and canned, fruits and vegetables, dried and preserved fruit, edible nuts, edible oils and fats are similar to a low degree to the opponent’s dried, cooked and preserved fruits and vegetables; edible oils and fats.

Advertising is providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or to reinforce the client’s position in the market and to acquire competitive advantage through publicity. Therefore, the contested advertising is dissimilar to the opponent’s goods, since they have different natures, purposes and methods of use. They also have different distribution channels, end users and producers or providers.

Retail services and wholesale shops and via global computer networks of antioxidant food supplements, tonics, bicarbonate of soda for pharmaceutical purposes, salts for medical purposes, alkaline iodides for pharmaceutical purposes, pharmaceutical and veterinary products, food and dietetic substances adapted for medical or veterinary use, baby food, food supplements for humans and animals; wholesale shops and via global computer networks of food snacks based on vegetables and legumes, concentrated juices of vegetable for food, dried legumes, cooked and canned spreadable jellies, jams, compotes, snack food mixes composed of dried fruit and processed nuts and the opponent’s goods are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are dissimilar.

The contested business management; business administration; office functions are mainly services rendered by persons or organisations principally with the object of helping in the running or management of a commercial undertaking, or helping in the management of the business affairs or commercial functions of an industrial or commercial enterprise. Therefore, these contested services are dissimilar to the opponent’s goods, since they have different natures, purposes and methods of use. They also have different distribution channels, end users and producers or providers.

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 services found to be similar to a low degree are directed at the public at large. The degree of attention is considered average.

3. The signs

	YOUNG’S ORIGINAL
Earlier trade mark	Contested sign

The relevant territory is European Union.

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking public.

The earlier mark is a figurative mark that consists in a verbal element, ‘YOUNG’S’, written in a white stylised font on a black background, which is a slightly stylised label that is purely decorative and has a contrasting white line just inside its perimeter.

The earlier mark will be recognised as a surname by the relevant public. The apostrophe will suggest something belonging to a person called ‘YOUNG’. As regards the earlier sign, it is composed of a distinctive verbal element and a less distinctive figurative element of a purely decorative nature. Therefore, the verbal element is more distinctive than the figurative element.

The contested sign is a word mark consisting in two verbal elements, ‘YOUNG’S’ and ‘ORIGINAL’.

As stated above, the verbal element ‘YOUNG’S’ will be recognised by the relevant public as a surname. The element ‘ORIGINAL’ of the contested sign will be understood by the relevant public as ‘referring to something that existed at the beginning of a process or activity, or the characteristics that something had when it began or was made’ and ‘if something such as a document, a work of art, or a piece of writing is an original, it is not a copy or a later version’ (information extracted from Collins Dictionary on 14/03/2017 at http://www.collinsdictionary.com). Therefore, when used in relation to the services in question, this word will be perceived as indicating that the services offered under this mark are original ‘YOUNG’S’ services and thus as ‘originating’ from ‘YOUNG’S’. Accordingly, the relevant public will pay more attention to the distinctive element ‘YOUNG’S’, which the signs have in common, than the non-distinctive word ‘ORIGINAL’, present only in the contested sign.

The contested sign is a word mark; it has no dominant elements because by definition they are written in a standard typeface. The length of the words or the number of letters is not an issue of dominance but of overall impression.

Visually, the signs coincide in ‘YOUNG’S’. They differ in the non-distinctive element of the contested sign ‘ORIGINAL’, which has no counterpart in the earlier mark, and in the additional figurative element of the earlier mark, which is not present in the contested sign. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘YOUNG’S’, present identically in both signs at issue. The pronunciation differs in the sound of the non-distinctive element in the contested sign, ‘ORIGINAL’, which has no counterpart in the earlier mark. Therefore, the signs are aurally highly similar.

Conceptually, the element ‘YOUNG’S’, included in both signs, will be recognised by the relevant public as a surname. The additional verbal element in the contested sign, ‘ORIGINAL’, which is non-distinctive for the relevant services, will be understood by the relevant public as stated above. Because they have in common the concept of ‘YOUNG’S’, and the element ‘ORIGINAL does not serve to distinguish the signs from a conceptual point of view. Therefore, the signs are conceptually highly similar.

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.

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

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark 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 must be seen as normal.

5. Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the services covered are from the same or economically linked undertakings.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The opponent stated that the applicant filed the contested trade mark in bad faith. This cannot be a basis for the opposition. Article 41 EUTMR states that an opposition can only be filed on the grounds set forth in Article 8 EUTMR. Since this Article does not include bad faith as a ground for opposition, this point will not be addressed.

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings because the applicant’s arguments concern the lack of identity and not the lack of similarity as in the present case.

Likewise, the opponent refers to previous national decisions to support its arguments. However, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks on the national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system which applies independently of any national system (13/09/2010, T-292/08, Often, EU:T:2010:399).

Even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings. In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings, since the signs considered in the current opposition differ from those in the previous decisions (‘WILD CHILD’).

In the present case, the contested goods and services are partly similar to a low degree and partly dissimilar. The relevant services target the public at large and the degree of attention is considered to be average.

The earlier mark and the distinctive verbal element of the contested sign have the element ‘YOUNG’S’ in common. However, the signs differ in the additional non-distinctive element of the contested sign, ‘ORIGINAL’. Therefore, as explained in section c), the signs are considered visually similar to an average degree and aurally and conceptually similar to a high degree.

The Opposition Division notes that the concept of likelihood of confusion includes the likelihood of association in the sense that, even if the relevant public does not immediately confuse the signs, it may still believe that identical and similar goods come from the same undertaking or at least economically linked undertakings.

Considering all the above and taking into account 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), the Opposition Division finds that there is a likelihood of confusion, including a likelihood of association, on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark application No 685 420. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the services found to be similar to low degree to those of the earlier trade mark due to the high similarity between the signs, which is the determining factor in this case for finding a likelihood of confusion for the services with a low level of similarity.

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 earlier United Kingdom trade mark registration No 1 556 269 for the word mark ‘YOUNG’S’.

Since this mark covers the same or a 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.

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

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 shall 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.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

1. The right under the applicable law

According to Article 76(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office will restrict this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

According to Rule 19(2)(d) EUTMIR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide evidence of its acquisition, continued existence and scope of protection.

Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide EUIPO not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C-263/09 P, Elio Fiorucci, EU:C:2011:452, § 50). The evidence to be submitted must allow the Opposition Division to determine safely that a particular right is provided for under the law in question, as well as the conditions for acquisition of that right. The evidence must further clarify whether the holder of the right is entitled to prohibit the use of a subsequent trade mark, as well as the conditions under which the right may prevail and be enforced vis-à-vis a subsequent trade mark.

As regards national law, the opponent must cite the provisions of the applicable law on the conditions governing acquisition of rights and on the scope of protection of the right. The opponent must provide a reference to the relevant legal provision (article number, and the number and title of the law) and the content (text) of the legal provision either as part of its submission or by highlighting it in a publication attached to the submission (e.g. excerpts from an official journal, a legal commentary or a court decision). As the opponent is required to prove the content of the applicable law, it must provide the applicable law in the original language. If that language is not the language of the proceedings, the opponent must also provide a complete translation of the legal provisions invoked in accordance with the standard rules of substantiation.

Furthermore, the opponent must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law.

In the present case, the opponent did not submit sufficient information on the legal protection granted to the type of trade sign invoked by the opponent, namely a United Kingdom non-registered mark. For example, the opponent could have filed copies of relevant case-law as well as material demonstrating exactly how the protection operates.

Therefore, the opposition is not well founded under Article 8(4) EUTMR.

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 shall 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

Steve HAUSER

Alexandra APOSTOLAKIS

Pedro JURADO MONTEJANO

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.