OPPOSITION No B 2 201 385

KRBL Limited, 5190, Lahori Gate, Delhi  110 006, La India (opponent), represented by Hortis Legal, Veraartlaan 8, 2288 GM Rijswijk ZH, The Netherlands (professional representative)

a g a i n s t

P.K. Overseas Pte Ltd, 33 Ubi Avenue 3, #01-55, Vertex, Singapore  408868  Singapur (holder), represented by EIP, Fairfax House 15, Fulwood Place, London  WC1V 6HU, United Kingdom (professional representative).

On 23/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 201 385 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 1 126 413. At the time when the opposition was filed, it was based on European Union trade mark registration No 3 073 988 , Spanish trade mark registration No 2 722 613(1) , and non-registered trade mark  in the United Kingdom, in Germany and in Spain. The opponent invoked Article 8(1) (b) and 8(4) EUTMR.

PRELIMINARY REMARK

On 05/02/2016, the opponent informed the Office that the Spanish trade mark registration No 2722613(1) is no longer a basis for 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 was based on two earlier trade marks with regards to Article 8(1) (b) EUTMR. However, as seen previously, the earlier Spanish registration is no longer to be considered as a basis for the opposition. Therefore, the Opposition Division will examine the opposition only in relation to the opponent’s European Union trade mark registration No 3 073 988.

1. The goods

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

Class 30: Rice.

After a limitation, the contested goods are the following:

Class 30: Rice, basmati rice having India as country of origin.

The contested goods are included in the broad category of the opponent’s rice. Therefore, they are identical.

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 goods considered to be identical are directed at the public at large. The degree of attention is considered to be average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the 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 earlier mark features the verbal elements ‘INDIA’ and ‘GATE’ in a white typeface placed one above the other and set against an almost rectangular black background with orange edges. Above these elements is a figurative element in sepia depicting a building or monument having the form of an arch.

The contested sign is a complex figurative sign shown as the two main sides of a packaging element, of brown and beige colour, which is rectangular in shape. Within these two sides are numerous verbal and figurative elements but the vast majority of them are small, illegible and/or not identifiable. This applies in particular to almost the entire left [rear] side of the packaging, which are likely to be instructions and information about the product. Even if these elements are not legible, they will not be totally disregarded by the relevant public given their prominent numbers in the sign.

The identifiable elements of the contested sign are the verbal elements ‘INDIA’ (positioned above) and ‘SALAM’ (bigger and positioned below) written in white upper case letters. Those verbal elements are located towards the central upper part of the right side of the packaging and enclosed in a stylised brown background. To the right of, and slightly above these elements is the Norwegian flag, which is also found in the same place in the left half of the mark.

Positioned beneath the verbal elements ‘INDIA SALAM’ are the hardly recognizable verbal elements ‘Pure Basmati Rice’ in white, which can also be found on the left [rear] side of the packaging.

Below this is a photographic type representation of a building, which will be recognized by the vast majority of the public as the Taj Mahal.

In the foreground, in front of that representation, is a depiction of a bowl of rice containing other ingredients (possibly spices or vegetables).

It has also to be noted that both sides of the packaging contains Arabic-looking text.

Finally, the elements as described above are contained in both sides within a stylised border which is reminiscent of a picture or mirror frame.

The coinciding verbal element ‘INDIA’ will be understood by the public as relating to the Indian subcontinent and/or to (the Republic of) India, a country covering most of the Indian subcontinent. Indeed, these geographic indications are well-known internationally. Moreover, ‘INDIA’ is a basic English word. In addition, it exists as such in the majority of the languages in the relevant territory and is very close to the equivalent word in the other languages (Indien in German, Danish, Inde in French, Intia in Finnish, Indija in Croatian, Indie in Czech and Polish, etc.). In addition, the country of India is well known to be a producer of the relevant goods, namely rice.

For all these reasons, the coinciding element ‘INDIA’ will be clearly perceived by the public as a descriptive reference of the origin of the goods and is therefore non-distinctive.

Likewise, the Norwegian flag in the contested sign is non-distinctive as it just indicates possibly an (other) origin or place of sale of the goods.

 

In the contested sign, the hardly legible term ‘Basmati’ will be understood by the entire public as a variety of rice and has therefore to be considered as non-distinctive for the relevant goods. The expression ‘Pure Basmati Rice’ is also descriptive in its entirety, at least for the English-speaking public.

Moreover, the Taj Mahal will be recognized by the relevant public in the contested sign and will lead that public to making a conceptual link with India. Indeed, this white marble mausoleum located in India is one of the most recognisable architectural structures and monuments in the world and has been included as a UNESCO World Heritage site. This association is reinforced by the verbal element ‘INDIA’. Therefore, this figurative element is considered  weak, especially since India is well known to be a producer of the relevant goods.

Likewise, the pictorial representation of a bowl of rice in the contested sign is weak as it shows a serving suggestion for the relevant goods.

In contrast, the biggest and most impactful verbal element of the contested sign ‘SALAM’ does not exist in the relevant languages of the European Union. This word is distinctive, even for the small part of the public which will see a reference to ‘salaam’, namely a Muslim form of salutation. Indeed, the latter has no descriptive or allusive link with the goods.

As regards the earlier mark, the opponent alleges that it consists of a representation of a famous gate in India, namely the India gate, and that this specific representation is sustained by the explicit word elements ‘INDIA GATE’. The Opposition Division is of the opinion that this monument and its name are not widely known by the relevant public. For the European public, this war memorial is not a symbol or emblem of India either, contrary to the Taj Mahal.

However, it cannot be excluded that a small part of the public will recognize the whole earlier mark as the name and realistic representation of this monument in India. In this case, the sign has to be considered as weak, since it gives an indirect indication of the geographical origin of the goods.

For the rest of the public, the figurative element will be seen as a distinctive monumental structure, namely an arch evoking the triumphal arches which can be found for example in Rome, Paris or London. Likewise, the verbal element ‘GATE’ has no meaning in relation with the goods. It will be understood at least by the English-speaking public as, in particular, a movable barrier, usually hinged, for closing an opening in a wall, fence, etc; an opening to allow passage into or out of an enclosed place; any means of entrance or access; (in a large airport) any of the numbered exits leading to the airfield or aircraft (Collins English Dictionary, www.collinsdictionary.com).

Lastly, the earlier mark has no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide only in the verbal element ‘INDIA’, which is non-distinctive, as explained above.

They differ in all the numerous additional verbal and figurative elements of the signs, as described above.

Contrary to the opinion of the opponent, the colours cannot fortify or create a similarity between the signs since they do not appear as identical or particularly striking. On the contrary, the non-coinciding colours and the complex structure of the contested sign, namely numerous elements in various colours, lead to a significant difference between the signs in terms of colour.  

In view of all the above, as the signs coincide only in a non-distinctive element, but differ in all the other aspects described above, to which more attention will be paid, the signs are dissimilar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the word ‛INDIA’, present in both signs. However, this word is non-distinctive. The pronunciation differs in the sound of the verbal elements /GATE/ in the earlier mark and /SA-LAM/ /PURE/ /BAS-MA-TI/ /RICE/ in the contested sign.

Therefore, since the signs only coincide in the sound of a non-distinctive element, they are dissimilar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

Although the coinciding word ‘INDIA’ will evoke a concept, it is not sufficient to establish a sufficient conceptual similarity, as this element is non-distinctive and cannot indicate the commercial origin of any of the goods.

The depiction of the Taj Mahal in the contested sign and, for a small part of the public, the reference to the war memorial ‘India gate’ in the earlier mark are weak and reinforce the abovementioned coincidence in a non-distinctive element, since they refer to India.

The signs differ in the numerous additional elements which have a meaning, as explained above.

The attention of the relevant public will be attracted by the additional fanciful verbal elements, which have no meaning.

Therefore, the signs are conceptually not similar.

4. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar in all aspects of the comparison, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent with regard to the

European Union trade mark registration No 3 073 988.

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.

Preliminary remark

In the notice of opposition under Territory/Member State(s), the boxes Germany, Spain and United Kingdom are ticked. However, the opponent did not submit any evidence and arguments as regards the first two territories.

In this context, it should be recalled that, 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 these two territories for which the opponent does not submit appropriate evidence.

1. The right under the applicable law – Passing off in the UK

The opponent claims to have the right to prohibit the use of the international registration applied for under the tort of passing off and based on the United Kingdom non registered trade mark .

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 OHIM 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 United Kingdom non registered trade mark under the tort of passing off. It made some references in its observations to supposed case-law. However, it is impossible to determine where the references originate from. The opponent does not even state that the references derive from English courts. Moreover, the opponent did not furnish any copies of the presumed decisions to which it refers.

It should be recalled that, even when it is clear that the opponent relies on national case-law to prove its case, it must provide the Office with this case-law in sufficient detail (a copy of the decision invoked) and not merely by references, quotations or extracts from decisions and publications somewhere in the legal literature. The proof of the source, namely the applicable law or indeed relevant case-law, is all the more important in a case of passing off that it is a common law tort. Moreover, treating the national legal situation as an issue of fact which is subject to proof by the party alleging such a right, is also justified by the fact that the Opposition Division is not always in a position to, in particular, monitor the corresponding changes of legislation or development of the case-law in all the Member States. In the present case, explicit and complete references to English case-law as well as copies of decisions should have been submitted by the opponent. Pursuant to the previous cited Article 76(1) EUTMR, the opposition must be rejected already for these reasons.

For the sake of completeness,  despite its common law roots, the passing off action is explicitly stated in section 5(4)(a) of the UK Trademark Act, under the other signs used in the course of trade which might prohibit the use of subsequent trade marks. However, the opponent did not base its opposition on section 5(4)(a), just as it did not provide any copy of the legal provision.

Lastly, it is again worth recalling that the onus is on the opponent to submit evidence as well as the opponent’s duty to collaborate when submitting evidence.  According to Article 76(1) EUTMR and the limited power of examination of the Office, the filing of evidence must be sufficiently clear, precise, complete and reliable to enable the other party to exercise its right of defence and the Office to perform its examination, without reference to extraneous or supportive information. It is not the role of the first instance jurisdiction to check of its own motion the information regarding the national law currently in force. This is also justified by the general principle of equal treatment between the parties, i.e. that the Opposition Division must not act to favour one party.

It is true that the case law recognises that the Office has a certain power of verification. However, it is limited to ensuring the accurate application of the law relied upon by the opponent. It does not therefore discharge the opponent from the burden of proof and it cannot serve to substitute the opponent in adducing the appropriate law for the purposes of its case (see decision of 02/06/2014, R 1587/2013-4, GROUP, § 26 and decision of 30/06/2014, R 2256/2013-2, ENERGY, § 26).

In view of all the above, the opposition is therefore 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.

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

Katarzyna ZANIECKA

Steve HAUSER

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.