OPPOSITION No B 2 589 276

Grupo Ybarra Alimentación, S.L., Carretera Isla Menor, KM.1800, 41703 Dos Hermanas (Sevilla), Spain (opponent), represented by Clarke, Modet y Cía. S.L., Rambla de Méndez Núñez, 12 – 1º Puerta 2 bis, 03002 Alicante, Spain (professional representative)

a g a i n s t

Zora Energy Renewables Limited, 4 Onslow Road, Hersham, Walton-on-Thames KT12 5BB, United Kingdom (applicant).

On 01/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 589 276 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 282 727 , namely against all the goods in Class 4. The opposition is based on Spanish trade mark registration No 155 145 for the word mark ‘Y’ and Spanish trade mark registration No 3 013 877 for the figurative mark . The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

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:

ES No 155 145

Class 29: Olive oil and olive pomace oil, vegetable oils and fats.

ES No 3 013 877

Class 29: Edible oils and fats.

The contested goods are the following:

Class 4: Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; fuel (wood); wood fibres (fuels); wood heating pellets [fuel]; wood chips for use as fuel.

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 4

The opponent’s goods in Class 29 are edible oils and fats, including olive oils, whereas the applicant’s goods in Class 4 mainly include industrial oils and greases, fuels and illuminants.

According to the opponent, these goods are similar, since they have the same nature (oils) and are produced using the same components (olives and vegetable seeds). It also argues that the contested goods may be produced using edible olive and vegetable oils, since there exist biofuels and specifically biodiesel produced with edible oils. To support its observations, it filed some evidence.

Although it is true that some of the contested goods are oils and greases and that biofuels can be produced with edible oils, this is not sufficient to render the conflicting goods similar, since they have different natures and purposes (the opponent’s goods are foodstuffs, comestible products prepared for consumption or conservation, whereas the applicant’s goods are industrial oils and greases, fuels and illuminants for industrial use). Furthermore, their manufacturers, distribution channels and sales outlets are different and they are neither in competition with each other nor complementary. Therefore, they are clearly dissimilar.

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.

This finding would still be valid even if the earlier trade marks were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the goods cannot be overcome by the highly distinctive character of the earlier trade marks, the evidence submitted by the opponent in this respect does not alter the outcome reached above.

REPUTATION – ARTICLE 8(5) EUTMR

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 shall 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). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Reputation of the earlier trade marks

According to the opponent, the earlier trade marks have a reputation in Spain.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 23/06/2015. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in Spain prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

ES No 155 145

Class 29: Olive oil and olive pomace oil, vegetable oils and fats.

ES No 3 013 877

Class 29: Edible oils and fats.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 02/05/2016, the opponent submitted the following evidence:

• Undated catalogues showing, inter alia, olive oils bearing the figurative trade mark .

• A declaration, translated into English, by the Managing Director of the Association of Famous Spanish Brands (AMRE), dated 03/02/2015. He states the following: ‘Grupo Ybarra Alimentación, S.L. has held full membership of the Leading Brands of Spain Association since 20/11/2014 due to the well-known character of its brand “YBARRA”.’

• A report by GFK, dated 2014, in Spanish. The opponent mentions in its observations that the relevant parts of the report are translated into English; however, no translation has been filed and the findings of the report have not been explained by the opponent.

• Press articles, dated prior to the relevant date, all in Spanish. No translation has been submitted.

• Photographs of products (olive oils), some extracted from the websites of supermarkets located in Spain, such as ‘Carrefour’, ‘Alcampo’, ‘día’, ‘spar’, ‘hipercor’, ‘cash Unide’, etc.

• Photographs of olive oils bearing the abovementioned figurative trade mark, extracted from the opponent’s website.

• Invoices issued by the opponent and addressed to clients located in the European Union, dated before the relevant date (filing date of the contested application). They show significant sales of ‘YBARRA’ olive oils.

• Results of a Google search for ‘ybarra’ and ‘ybarra 1842’ (web and images) and an article from Wikipedia, in Spanish, entitled ‘Ybarra’.

• Extracts from the opponent’s website www.ybarra.es, in Spanish and English. They show olive oils bearing the abovementioned figurative trade mark and they relate the opponent’s history, including its having received ISO 9002 Quality Certification and IFS and BRC Quality and Food Safety Certifications and its membership of AMRE.

• Articles extracted from Wikipedia, www.oilgae.com, www.oliveoiltimes.com and www.renewableenergyfocus.com in relation to biofuel and olive oils, results of a Google search for ‘biofuel and olive oil sector’ (web and images) and an article in Spanish entitled ‘Un análisis de las industrias de refinación del aceite de oliva en Andalucía’.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a reputation.

First, the evidence concerns only the figurative trade mark  and not the word mark ‘Y’, since the letter ‘Y’ is never depicted on its own, but always accompanied by the word ‘YBARRA’. Despite showing some use of that trade mark, the evidence does not provide sufficient information on the extent of such use. The evidence does not indicate the sales volumes, the market share of the trade mark or the extent to which the trade mark has been promoted. The evidence that could relate to the degree of recognition of the trade mark by the relevant public, namely the GFK report and the press articles, has not been translated into the language of proceedings and the opponent has not submitted any explanation of these documents in its observations.

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)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party shall 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.

According to Rule 19(3) EUTMIR, the information and evidence referred to in paragraphs 1 and 2 shall be in the language of the proceedings or accompanied by a translation. The translation shall be submitted within the time limit specified for submitting the original document.

According to Rule 19(4) EUTMIR, the Office shall not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

In the present case, most of the evidence, in particular the GFK report and the press articles, are not in the language of the proceedings and the opponent did not submit the necessary translations. It should have filed a translation of, at least, the relevant parts of the documents that are not self-explanatory (see Guidelines, Part C, Opposition, Section 5, Trade marks with reputation Article 8(5) EUTMR, Evaluation of the evidence, p. 27).

Furthermore, the remaining documents, namely the declaration, the photographs of the products, the invoices, the catalogues, the Google search results, the extracts from the opponent’s website and the internet articles, do not provide information as regards the recognition of the mark on the part of the relevant consumers in Spain. In particular, the evidence in English from the opponent’s website derives directly from the opponent and does not come from independent third parties. Furthermore, even though it shows that the opponent has used its figurative trade mark ‘Y YBARRA’ for many years and that the opponent has received certifications for the quality of its products, it does not show that the mark is known by a significant part of the public. These certifications such as the ISO quality certificate mean only that the opponent’s goods meet certain quality or technical standards, but this information has not been corroborated with other indications of quality and market success (e.g. the press articles should have been translated into English). Finally, the Declaration from the Director of AMRE, on its own, is also insufficient to prove the reputation of the earlier marks, since it mentions only the word mark ‘YBARRA’ and not the earlier marks ‘Y’ and .

As a result, the evidence does not show that the trade marks are known by a significant part of the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade marks have a reputation.

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 marks have a reputation, one of the necessary conditions contained in Article 8(5) 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 applicant 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 applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

Although the winning party is no longer represented by a professional representative at the time of rendering this decision, it was represented by a professional representative within the meaning of Article 93 EUTMR in the course of the opposition proceedings. Therefore, the winning party incurred representation costs which it is entitled to recover, in accordance with Rule 94(7)(d) EUTMIR.

The Opposition Division

Begoña URIARTE VALIENTE

Frédérique SULPICE

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.

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.