OPPOSITION No B 2 507 468

ŽITO prehrambena industrija, d.d., Šmartinska 154, 1529 Ljubljana, Slovenia (opponent), represented by ITEM d.o.o., Resljeva 16, 1000 Ljubljana, Slovenia (professional representative)

a g a i n s t

Yildiz Holding Anonim Sirketi, Kisikli Mahallesi Çesme Çikmazi, Sokak No:6/1, Üsküdar Istanbul, Republic of Turkey (holder), represented by WürtenbergerKunze, Maximiliansplatz 12b, 80333 München, Germany (professional representative).

On 17/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 507 468 is upheld for all the contested goods.

2.        International registration No 1 227 430 is entirely refused protection in respect of the European Union.

3.        The holder bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of international registration designating the European Union No 1 227 430.The opposition is based on, inter alia, international trade mark registration No 1 211 268 designating, inter alia, Croatia. The opponent invoked Article 8(1)(a) and (b) EUTMR.

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 international trade mark registration No 1 211 268 insofar as it designates Croatia.

DOUBLE IDENTITY — ARTICLE 8(1)(a) EUTMR

Pursuant to Article 8(1)(a) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered if it is identical to the earlier trade mark and the goods or services for which registration is applied for are identical to the goods or services for which the earlier trade mark is protected.

1. The goods

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

Class 30:        Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice; allspice; almond confectionery; almond paste; aniseed; aromatic preparations for food; artificial coffee; baking powder; baking soda [bicarbonate of soda for cooking purposes]; barley meal; bean meal; bee glue; beer vinegar; binding agents for ice cream; bread; bread rolls; breadcrumbs; buns; cake frosting [icing]; cake powder; cakes; candy; capers; caramels [candy]; celery salt; cereal bars; cereal-based snack food; cereal preparations; cheeseburgers [sandwiches]; chewing gum; chicory [coffee substitute]; chips [cereal products]; chocolate; chocolate-based beverages; chocolate beverages with milk; chocolate mousses; chow-chow [condiment]; chutneys [condiments]; cinnamon [spice]; cloves [spice]; cocoa; cocoa-based beverages; cocoa beverages with milk; coffee; coffee-based beverages; coffee beverages with milk; coffee flavorings [flavourings]; condiments; confectionery; confectionery for decorating Christmas trees; cookies; cooking salt; corn flakes; corn meal; corn, milled; corn, roasted; couscous [semolina]; crackers; cream of tartar for culinary purposes; crushed barley; crushed oats; curry [spice]; custard; dessert mousses [confectionery]; dough; dressings for salad; edible ices; essences for foodstuffs, except etheric essences and essential oils; farinaceous foods; ferments for pastes; flavorings, other than essential oils; flavorings, other than essential oils, for beverages; flavorings, other than essential oils, for cakes; flour-milling products; fondants [confectionery]; frozen yogurt [confectionery ices]; fruit coulis [sauces]; fruit jellies [confectionery]; garden herbs, preserved [seasonings]; ginger [spice]; gingerbread; glucose for culinary purposes; gluten additives for culinary purposes; gluten prepared as foodstuff; golden syrup; groats for human food; gruel, with a milk base, for food; halvah; ham glaze; high-protein cereal bars; hominy; hominy grits; honey; husked barley; husked oats; ice cream; ice for refreshment; ice, natural or artificial; iced tea; infusions, not medicinal; ketchup [sauce]; leaven; linseed for human consumption; liquorice [confectionery]; lozenges [confectionery]; macaroni; macaroons [pastry]; malt biscuits; malt extract for food; malt for human consumption; maltose; marinades; marzipan; mayonnaise; meal; meat gravies; meat pies; meat tenderizers, for household purposes; mint for confectionery; molasses for food; muesli; mustard; mustard meal; natural sweeteners; noodle-based prepared meals; noodles; nutmegs; oat-based food; oat flakes; oatmeal; palm sugar; pancakes; pasta; pasta sauce; pasties; pastries; pastry; peanut confectionery; pepper; peppermint sweets; peppers [seasonings]; pesto [sauce]; petit-beurre biscuits; petits fours [cakes]; pies; pizzas; popcorn; potato flour for food; powders for ice cream; pralines; preparations for stiffening whipped cream; puddings; quiches; ravioli; relish [condiment]; rice; rice-based snack food; rice cakes; royal jelly; rusks; saffron [seasoning]; sago; salt for preserving foodstuffs; sandwiches; sauces [condiments]; sausage binding materials; sea water for cooking; seasonings; seaweed [condiment]; semolina; sorbets [ices]; soya bean paste [condiment]; soya flour; soya sauce; spaghetti; spices; spring rolls; star aniseed; starch for food; stick liquorice [confectionery]; sugar; sushi; sweetmeats [candy]; tabbouleh; tacos; tapioca; tapioca flour for food; tarts; tea; tea-based beverages; thickening agents for cooking foodstuffs; tomato sauce; tortillas; turmeric for food; unleavened bread; unroasted coffee; vanilla [flavoring] [flavouring]; vanillin [vanilla substitute]; vegetal preparations for use as coffee substitutes; vermicelli [noodles]; vinegar; waffles; wheat flour; wheat germ for human consumption; yeast.

 

The contested goods are the following:

Class 30:        Coffee, cocoa; coffee or cocoa based beverages, chocolate based beverages; pasta, stuffed dumplings, noodles; pastries and bakery products based on flour, desserts based on flour and chocolate; honey, bee glue for human consumption, propolis for food purposes; spices and condiments for foodstuff; yeast, baking powder; flour, semolina, starch for food; sugar, cube sugar, powdered sugar; tea, ice tea; confectionery, chocolate, biscuits, crackers, wafers; chewing gums; ice-cream, edible ices; salt; cereals and cereal-based foodstuff; molasses for food.

The contested coffee, cocoa; coffee or cocoa based beverages, chocolate based beverages; pasta, noodles; pastries; honey, bee glue for human consumption; spices and condiments for foodstuff; yeast, baking powder; flour, semolina, starch for food; sugar; tea, ice tea; confectionery, chocolate, crackers; chewing gums; ice-cream, edible ices; salt; molasses for food are identically listed in both sets of goods (including synonyms).

The contested stuffed dumplings overlap with the opponent’s broader category pasta, since stuffed dumplings can be made of pasta. Therefore, the contested goods are identical to the opponent’s pasta.

The contested bakery products based on flour includes, as a broader category, the opponent’s bread. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested desserts based on flour and chocolate overlaps with the opponent’s tarts, since tarts are made of flour and may also contain chocolate. Therefore, these goods are identical.  

The contested propolis for food purposes is synonymous and identical to the opponent’s bee glue.

The contested cube sugar, powdered sugar is included in the opponent’s broader category sugar and these goods are identical.

The contested biscuits include, as a broader category, the opponent’s malt biscuits. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested wafers are included in the opponent’s broad category of cereal-based snack food and are identical.

The contested cereals include, as a broader category, the opponent’s oatmeal. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.  

The contested cereal-based foodstuff is identical to the opponent’s preparations made from cereals as synonyms.  

2. The signs

MAESTRO	MAESTRO
Earlier trade mark	Contested sign

The signs are identical.

3. Global assessment, other arguments and conclusion

The holder claims that the opponent’s international registration No 1 211 268 is a ‘re-filing’ of the opponent’s earlier international registration No 789 537, which is subject to proof of use. Therefore, international registration No 1 211 268 should also be subject to proof of use (although it was registered on 07/01/2014). The Opposition Division cannot share this view and notes that the opponent’s two earlier international registrations are completely different marks; international registration No 1 211 268 is a word mark whereas international registration No 789 537 is a figurative mark.

Therefore, the opposition must be upheld according to Article 8(1)(a) EUTMR.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(a) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(1)(b) EUTMR.

As the abovementioned earlier international trade mark registration No 1 211 268 insofar as it designates Croatia leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent or the proof of use submitted in relation to some of these other earlier rights (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 holder is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Martina GALLE

Christian RUUD

Begoña URIARTE VALIENTE

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.