OPPOSITION No B 2 499 880

Comercial Chocolates Lacasa S.A., Autovia Logroño Km. 14, 50180 Utebo (Zaragoza), Spain (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative).

a g a i n s t

AB Mauri Technology Pty Limited, Level 1, Building A 11 Talavera Road, North Ryde, New South Wales 2113, Australia (applicant), represented by A.A. Thornton & Co., 10 Old Bailey, London EC4M 7NG, United Kingdom (professional representative).

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

DECISION:

1.        Opposition No B 2 499 880 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 European Union trade mark application No 13 526 587. The opposition is based on Spanish trade mark registrations No 1 096 516 and No 2 936 801, and European Union trade mark registrations No 59 618, No 9 235 243 and No 9 280 496. The opponent invoked Article 8(1)(b) EUTMR.

THE SIGNS

Spanish trade mark No 1 096 516 MAURI European Union trade mark No 59 618 Spanish trade mark registration No 2 936 801 European trade mark registration No 9 235 243 European trade mark registration No 9 280 496	MAURI
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 shall 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 shall be rejected.

The applicant requested that the opponent submit proof of use for some of the trade marks on which the opposition is based, namely Spanish trade mark No 1 096 516, and European Union trade mark No 59 618.

The request was submitted in due time and is admissible as the earlier trade marks were registered more than five years prior to the publication of the contested application.

The contested application was published on 30/12/2014. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Spain and the European Union from 30/12/2009 to 29/12/2014 inclusive.

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

Spanish trade mark No 1 096 516

Class 30:        Coffee, tea, cocoa, and artificial coffee, rice tapioca and sago; coffee substitutes; flour and preparations made from cereals; bread, cakes, tarts; pastry and confectionery; edible ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices, ice.

European Union trade mark No 59 618 MAURI

Class 30:        Chocolates, bon-bons, sugar coated chocolate tablets, hard candy, nougat and confectionery.

According to Rule 22(3) EUTMIR, the evidence of use shall 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 30/06/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 31/08/2015 to submit evidence of use of the earlier trade marks. On 27/08/2015, at the opponent’s request, this deadline was extended to 31/10/2015. On 30/10/2015, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Annex II: 19 invoices covering the time period 2009-2014 (three invoices are dated in 2009 but before 30/12/2009). The invoices show sales to the value of around EUR 1200 made under the trade mark MAURI for goods identified as “SURTIDO”. The invoices are in Spanish (with a partial translation into English). The invoices are addressed to clients in Spain.
• Annex III: A certificate dated 16/10/2015 from the General Manager, Mr. Vicente Maza Carcas, in which he certifies the cost for advertisements during the time period 2009-2014 and the sales volume under the same period. The advertisement costs were around EUR 290 000 and the sales volume around EUR 4 100 000. There is nothing in the documents that indicates if these figures are just related to Spain or also for other countries.
• Annex IV: An extract from a magazine that displays some of the products they are selling. Some of the products have the brand MAURI on them. There is a handwritten date, October 2010, on the extract that, according to the opponent, is the date when the magazine was published.
• Annex V: Catalogue containing different MAURI products (various confectionery items), information of what they contain and article numbers. The catalogue is dated 2011 and is in Spanish.
• Annex VI: A Google search on the brand MAURI with the addition of the non-distinctive word “caramelos” (in English “candy”). The search is done in Spanish and the results were extracted on 23/10/2015 which is outside the relevant time period. The search results shows images of the opponent’s candy and hits related to the brand MAURI. Furthermore, the opponent submitted an extract from their website that shows some of the products they offer most containing the brand MAURI. The extract is in Spanish and has the date 30/10/2015, which also is outside the relevant time period.
• Annex VII: Eight samples of packaging containing the brand MAURI. The samples have no date and the information on the packaging is in different languages, one of them being Spanish. From the information in English it can be seen that packages are for various confectionery items (hard sweets and gelatine based sweets).

The applicant 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, Google search, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.

As far as the certificate, written by Mr. Vicente Maza Carcas, is concerned, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all.

The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier marks are registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

The submitted invoices show that the place of use is Spain. This can be inferred from the language of the documents (Spanish), the currency mentioned (Euro) and some addresses in Spain. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated or refers to dates within the relevant period, especially looking at the invoices.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that the commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, namely the invoices, the extract in Annex IV, the catalogue in Annex V and the certificate all together, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. Although the invoices by themselves don’t show a high volume of sales the opponent has submitted three or four samples per year during the last five years. This combined with the written certificate, the extract and the catalogue is sufficient to show that the mark has been used in a not merely token way.

Use of the mark need not be quantitatively significant for it to be deemed genuine.

The evidence submitted by the opponent in order to prove genuine use of the earlier EUTM relates exclusively to Spain. As stated above, the territorial scope of the use is only one of several factors to be assessed in the determination of whether the use is genuine or not.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier marks.

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

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).

Most evidence show use of the figurative mark whilst only a small part of the evidence show use of the word mark for example in the invoices. However, according to Article 15(1), second subparagraph, point (a) EUTMR, use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered shall also constitute use within the meaning of paragraph 1. Considering that the figurative elements in mark No 1 096 516 is weak and that the dominant and distinctive part is the verbal element MAURI, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of Spanish figurative trade mark No 1 096 516 and European Union trade mark No 59 618 during the relevant period in the relevant territory.

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

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 shall, 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 trade marks for the following goods:

Class 30:                Confectionery.

Therefore, the Opposition Division will only consider the abovementioned goods 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.

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 registration No 59 618.

1. The goods

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

Class 30:        Confectionery.

The contested goods are the following:

Class 30:         Cereal ferments; flour based mixes; bakery mixes; bread mixes; cake mixes; bread improvers and conditioners; cake improvers and conditioners.

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 30

Unlike the views of the opponent, the Opposition Division’s view is that all the contested goods in Class 30 are dissimilar to the opponent’s good. All the goods of the contested mark are ingredients or preparations for making other goods whilst the opponent’s confectionery is a finished item. Therefore, these goods have a different purpose, different producer and distribution channels. The mere fact that an ingredient is needed for the preparation of a foodstuff is generally not be sufficient in itself to show that the goods are similar (judgment of 26/10/2011, T-72/10, Naty’s, EU:T:2011:635, § 35-36).

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.

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

• Spanish trade mark registration No 1 096 516 for the figurative mark
• Spanish trade mark registration No 2 936 801 for the figurative mark  
• European trade mark registration No 9 235 243 for the figurative mark
• European trade mark registration No 9 280 496 for the figurative mark 

Since these marks cover the same scope of goods (they are registered or use was only proven for the category of confectionery and, in some cases, also various types of confectionery), the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

The opponent based the opposition on Article 8(1)(b), but with its further submissions also argued for Article 8(1)(a). Although the specific conditions under Article 8(1)(a) and (b) EUTMR differ, they are related. Therefore, it seems reasonable to at least address the opponent’s arguments for a likelihood of confusion under Article 8(1)(a).

The wording of Article 8(1)(a) EUTMR requires identity between both the signs concerned and the goods and services in question. In the present case, the goods have been found dissimilar, therefore, a basic requirement of Article 8(1)(a) EUTMR has not been met and the opposition must also 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.

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.

The Opposition Division

Ric WASLEY

Benjamin Erik WINSNER

Vita VORONECKAITE

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.