OPPOSITION DIVISION
OPPOSITION No B 2 438 599
Unialco, S.L., Carretera Oiartzun, s/n, B. Ventas, 20305 Irun (Guipuzcoa), Spain
(opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain
(professional representative)
a g a i n s t
Dansk Supermarked A/S, Rosbjergvej 33, 8220 Brabrand, Denmark (applicant),
represented by Bech-Bruun law firm, Værkmestergade 2, 8000 Århus C, Denmark
(professional representative).
On 20/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 514 50699 is partially upheld, namely for the following
contested services:
Class 35: Retail services for pharmaceutical, veterinary and sanitary
preparations and medical supplies; Retail services relating to food;
Retail services connected with the sale of clothing and clothing
accessories; Wholesale services in relation to non-alcoholic
beverages; Retail services in relation to alcoholic beverages
(except beer); Wholesale services in relation to clothing; Retail
services in relation to lighting; Retail services in relation to cutlery;
Retail services in relation to tableware; Retail services in relation to
dietetic preparations; Wholesale services in relation to disposable
paper products; Retail services in relation to festive decorations;
Retail services in relation to cookware; Retail services in relation to
hygienic implements for humans; Retail services in relation to
hygienic implements for animals; Wholesale services in relation to
headgear; Retail services in relation to horticulture products; Retail
services in relation to foodstuffs; Wholesale services in relation to
footwear; Retail services in relation to fodder for animals;
Wholesale services in relation to cleaning articles; Retail services in
relation to animal grooming preparations; Wholesale services in
relation to preparations for making beverages; Retail services
connected with stationery; Retail services in relation to toys; Retail
services in relation to dietary supplements; Retail services in
relation to toiletries; Retail services in relation to bags; Retail
services in relation to sewing articles; Retail services in relation to
sporting articles; Retail services in relation to games; Retail
services in relation to jewellery; Retail services in relation to beauty
implements for humans; Retail services in relation to beauty
implements for animals; Retail services in relation to cleaning
preparations; Retailing of candles and wicks for lighting purposes,
briquettes, fuels, charcoal and lighter fluids for barbecues; Retailing
of dental preparations and articles; Retailing of cleaning and
fragrancing preparations; Retailing of apparatus and instruments
Decision on Opposition No B 2 438 599 page: 2 of 15
for accumulating and storing electricity, including batteries;
Retailing of spectacles and sunglasses, and cases therefor;
Retailing of bags and articles for packaging, storage and wrapping
of foodstuffs; Retailing of hair ornaments; Retailing of fertiliser for
soil and potting soil; Retailing of meat, fish, poultry and game, meat
extracts, preserved, frozen, dried and cooked fruits and vegetables,
jellies, jams, compotes, eggs, milk and milk products, edible oils
and fats; Retailing of 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;
Retailing of grains and agricultural, horticultural and forestry
products, fresh fruits and vegetables, seeds, natural plants and
flowers, foodstuffs for animals, malt; Retailing of beers, mineral and
aerated waters and other non-alcoholic beverages, fruit beverages
and fruit juices, syrups and other preparations for making
beverages, alcoholic beverages; Retailing of tobacco, smokers’
articles, matches.
2. European Union trade mark application No 13 085 40236 is rejected for all the
above services. It may proceed for the remaining services, namely: wholesale
services for pharmaceutical, veterinary and sanitary preparations and medical
supplies.
3. Each party bears its own costs.
PRELIMINARY REMARK
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the services of European Union trade
mark application No 13 085 40236. The opposition is based on the following earlier
rights: Spanish trade mark registration No 1 275 855 ‘NETTO SUPERMERCADOS’,
Spanish trade mark registration No 1 992 081 ‘NETTO’, Spanish trade mark
registration No 1 992 082 ‘NETTO’, Spanish trade mark registration No. 2 185 113
‘NETTO’, Spanish trade mark registration No 2 185 114 ‘NETTO’ and Spanish trade
mark registration No 2 222 553 (with a red colour claim for
certain elements). The opponent invoked Article 8(1)(b) EUTMR.
Decision on Opposition No B 2 438 599 page: 3 of 15
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, now Article 47(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. 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 will be
rejected.
The applicant requested that the opponent submit proof of use of the trade marks on
which the opposition is based – those listed above in the ‘REASONS’ section of the
decision.
The contested application was published on 28/08/2014. The opponent was therefore
required to prove that the trade marks on which the opposition is based were put to
genuine use in Spain from 28/08/2009 to 27/08/2014 inclusive.
The request was submitted in due time and is admissible as the earlier trade marks
were registered more than five years prior to the relevant date mentioned above.
Furthermore, the evidence must show use of the trade marks for the goods and
services on which the opposition is based, namely the following:
Spanish trade mark registration No 1 275 855 ‘NETTO SUPERMERCADOS’:
Class 39: Supermarket services.
Spanish trade mark registration No 1 992 081 ‘NETTO’:
Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and
cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and
milk products; edible oils and fats.
Spanish trade mark registration No 1 992 082 ‘NETTO’:
Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and
preparations made from cereals, bread, pastry and confectionery, ices;
honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces
(condiments); spices; ice.
Spanish trade mark registration No. 2 185 113 ‘NETTO’:
Class 16: Paper, cardboard and goods made from these materials, not included
in other classes; printed matter; bookbinding material; photographs;
stationery; adhesives for stationery or household purposes; artists’
materials; paint brushes; typewriters and office requisites (except
furniture); instructional and teaching material (except apparatus);
plastic materials for packaging (not included in other classes); playing
cards, printers’ type; printing blocks.
Decision on Opposition No B 2 438 599 page: 4 of 15
Spanish trade mark registration No 2 185 114 ‘NETTO’:
Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit
drinks and fruit juices; syrups and other preparations for making
beverages.
Spanish trade mark registration No 2 222 553 :
Class 39: Distribution, packaging, transport; distribution of goods for
supermarkets and hypermarkets.
According to Rule 22(3) EUTMIR (in the version in force at the moment of filing the
request for proof of use), the evidence of use must consist of indications concerning
the place, time, extent and nature of use of the opposing trade mark for the goods or
services in respect of which it is registered and on which the opposition is based.
On 20/12/2016, in accordance with Rule 22(2) EUTMIR (in the version in force at the
moment of filing the request for proof of use), the Office gave the opponent until
25/02/2017 to submit evidence of use of the earlier trade marks. On 20/02/2017,
within the time limit, the opponent submitted evidence of use.
The opponent submitted evidence in a structured way. A copy of the set of evidence
has been sent to the applicant. For the sake of clarity the Opposition Division will
stick to this structure and the references to various documents provided by the
opponent.
The evidence to be taken into account is the following:
Attachment 1 – Evidence related to the use of the trade marks during 2010:
1.1. Undated pictures of the inside and outside of buildings displaying the
sign . It can be inferred from the pictures that the
buildings are supermarkets selling a variety of consumer goods.
1.2. Undated pictures of lorries on which the trade mark
is displayed.
1.3. An undated picture of a football team. Contrary to the opponent’s
statement none of the earlier marks is visible on the picture.
Decision on Opposition No B 2 438 599 page: 5 of 15
1.4. Undated document in Spanish displaying a picture of a building
bearing the trade mark . In its submissions the
opponent provides translation of parts of the document which the
opponent considers relevant. In particular the document provides
information regarding the opening of a ‘NETTO’ hypermarket in Alhama
(Spain) in 2006 and a ‘NETTO’ hypermarket in Estella (Spain) in 2010.
1.5. A document which resembles a page of a catalogue (not translated).
1.6. Promotional leaflets showing the sign . The
leaflets promote a wide variety of consumer goods – foodstuffs, clothing,
toys, laundry preparations, household and kitchen utensils, etc. The
leaflets can be dated to the year 2010.
1.7. A document issued by the Estella Town Council attesting the receipt
of the tax payable for the commencement, on 25 November 2010 of the
operation of a business described as ‘retailing through hypermarkets
offering foodstuffs and a broad range of goods on a self-service basis.
The sign ‘NETTO’ is referenced in the document as ‘Trade Name’.
Attachment 2 – Evidence related to the use of the trade marks during 2011,
namely promotional leaflets showing the sign . The
leaflets promote a wide variety of consumer goods – foodstuffs, clothing, toys,
laundry preparations, household and kitchen utensils, etc. The leaflets can be
dated to the year 2011.
Attachment 3 – Evidence related to the use of the trade marks during 2012
3.1. Three invoices issued by (i) Hiper Costa Esmeralda, S.L. (Netto
Elgoibar and Netto Alhama supermarkets) to Panaderia Etxeberi, S.L. in
February for the rent payment due by the bread shop; (ii) Almacen de
Patatas S.L. to Hiper Costa Esmeralda, S.L. in March 2012 for the
delivery of fruits and vegetables; and (iii) Hiper Costa Esmeralda, S.L.
(Netto Elgoibar) to Elgonet Sistemas Informaticos S.L. in December
2012.
3.2. Promotional leaflets showing the sign . The
leaflets promote a wide variety of consumer goods – foodstuffs, clothing,
toys, laundry preparations, household and kitchen utensils, etc.
3.3. Leaflets relating to specific promotions of wines, meat, etc. in 2012.
3.4. Undated document in Spanish referred to by the opponent as Info
bulletin. The document contains various related information, for instance
Decision on Opposition No B 2 438 599 page: 6 of 15
regarding to the opening of healthy food sections in the ‘NETTO’
supermarkets, in particular in the town of Mendibil (Spain) and regarding
sponsorship activities.
3.5. Undated document in Spanish referred to by the opponent as Info
bulletin. In its submissions the opponent provides translation of parts of
the document which the opponent considers relevant. In particular the
document provides information regarding the opening of a ‘NETTO’
hypermarket in Altatsu in 2003, agreement signed with the fisherman
association of Santoña (Cantabria) for the sale of fresh fish.
Attachment 4 – Evidence related to the use of the trade marks during 2013
4.1. Excerpt from the newspaper Diario de Navarra of 21/02/2013
displaying an advertisement for particular foodstuffs products showing the
trade mark .
4.2. Leaflets promoting special offers for foodstuffs, kitchen utensils, etc.
during 2013.
4.3. Recruitment notice published in the newspaper El Correo of
02/06/2013 displaying the sign .
4.4. – 4.10. Invoices for purchase of various goods, mainly foodstuffs by
Hiper Costa Esmeralda S.L. (Netto Estella).
4.11. Two documents relating to the NETTO establishments in Laredo
(Cantabria) regarding various activities involving the NETTO
supermarkets.
Attachment 5 – Evidence related to the use of the trade marks during 2014
5.1. Various notices sent to the works council concerning the installation
of video surveillance systems at the NETTO supermarkets in Laredo,
Santander and Castro Urdiales and on the opening hours on 6 December
(bank holiday) at the NETTO supermarkets in Laredo and Castro
Urdiales.
5.2. – 5.5. Invoices for the delivery of various consumers goods to the
NETTO supermarkets in April, September and November.
The applicant argues that the opponent did not submit translations of some of the
evidence of use (in particular attachments 1.4, 3.4 and 3.5) and that in case no
translation is provided 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 (Article 10(6) EUTMDR, former
Rule 22(6) EUTMIR in force before 01/10/2017). Taking into account the nature of the
documents that have not been translated and are considered relevant for the present
proceedings, namely the ones presented as attachments 1.4, 3.4 and 3.5, and the
Decision on Opposition No B 2 438 599 page: 7 of 15
fact that the opponent indeed provided translations of the parts that it considers
relevant, the Opposition Division finds that there is no need to request a translation.
The invoices and the promotional leaflets show that the place of use is Spain. This
can be inferred from the language of the documents (‘Spanish’) and some addresses
in Spain. Therefore, the evidence relates to the relevant territory.
Most of the evidence is dated within the relevant period.
The documents filed, namely the pictures, the invoices and the leaflets provide the
Opposition Division with sufficient information concerning the commercial volume, the
territorial scope, the duration, and the frequency of use. The evidence relates to at
least few operational supermarkets, that is a chain of supermarkets which already
justifies an extent that is sufficient to accept genuine use.
In the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before
01/10/2017), the expression ‘nature of use’ includes evidence of use of the sign in
accordance with its function, of use of the mark as registered, or of a variation thereof
according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for
the goods and services for which it is registered.
According to Article 18(1), second subparagraph, point (a), EUTMR, the following will
also constitute use within the meaning of paragraph 1: use of the European Union
trade mark in a form differing in elements that do not alter the distinctive character of
the mark in the form in which it was registered, regardless of whether or not the trade
mark in the form as used is also registered in the name of the proprietor. When
examining the use of an earlier registration for the purposes of Article 47(2) and (3)
EUTMR, Article 18 may be applied by analogy to assess whether or not the use of
the sign constitutes genuine use of the earlier mark as far as its nature is concerned.
In the present case, the evidence shows use of the signs ‘NETTO’ and
. Use of this signs can also be considered use for the trade
mark ‘NETTO SUPERMERCADOS’ since ‘SUPERMERCADOS’ is a non-distinctive
element and its omission does not alter the distinctive character of the sign as
registered. Same is true for the figurative elements of the design to which any
distinctive character can hardly be attributed – the figurative element placed before
the verbal element Netto is a stylised presentation of a trolley which is weak in
relation to supermarket services. The frame is a purely decorative element and the
stylisation of the letters of the verbal element is not particularly imaginative.
The evidence of use shows that the mark has been used for supermarket services.
No use has been proven for any other of the goods and services covered by the
earlier marks.
Since the opponent did not prove use for the goods and services covered by Spanish
trade mark registration No 1 992 081 ‘NETTO’, Spanish trade mark registration No
1 992 082 ‘NETTO’, Spanish trade mark registration No. 2 185 113 ‘NETTO’, Spanish
trade mark registration No 2 185 114 ‘NETTO’ and Spanish trade mark registration
No 2 222 553 the opposition is hereby rejected pursuant to
Article 47(2) and (3) EUTMR as far as it is based on these five earlier rights.
Decision on Opposition No B 2 438 599 page: 8 of 15
The examination proceeds based on the opponent’s Spanish trade mark registration
No 1 275 855 ‘NETTO SUPERMERCADOS’ for the services in Class 39
‘Supermarket services’.
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.
a) The services
The services on which the opposition is based are the following:
Class 39: Supermarket services.
The contested services are the following:
Class 35: Retail or wholesale services for pharmaceutical, veterinary and
sanitary preparations and medical supplies; Retail services relating to
food; Retail services connected with the sale of clothing and clothing
accessories; Wholesale services in relation to non-alcoholic
beverages; Retail services in relation to alcoholic beverages (except
beer); Wholesale services in relation to clothing; Retail services in
relation to lighting; Retail services in relation to cutlery; Retail services
in relation to tableware; Retail services in relation to dietetic
preparations; Wholesale services in relation to disposable paper
products; Retail services in relation to festive decorations; Retail
services in relation to cookware; Retail services in relation to hygienic
implements for humans; Retail services in relation to hygienic
implements for animals; Wholesale services in relation to headgear;
Retail services in relation to horticulture products; Retail services in
relation to foodstuffs; Wholesale services in relation to footwear; Retail
services in relation to fodder for animals; Wholesale services in
relation to cleaning articles; Retail services in relation to animal
grooming preparations; Wholesale services in relation to preparations
for making beverages; Retail services connected with stationery;
Retail services in relation to toys; Retail services in relation to dietary
supplements; Retail services in relation to toiletries; Retail services in
relation to bags; Retail services in relation to sewing articles; Retail
services in relation to sporting articles; Retail services in relation to
games; Retail services in relation to jewellery; Retail services in
relation to beauty implements for humans; Retail services in relation to
beauty implements for animals; Retail services in relation to cleaning
preparations; Retailing of candles and wicks for lighting purposes,
briquettes, fuels, charcoal and lighter fluids for barbecues; Retailing of
dental preparations and articles; Retailing of cleaning and fragrancing
preparations; Retailing of apparatus and instruments for accumulating
and storing electricity, including batteries; Retailing of spectacles and
Decision on Opposition No B 2 438 599 page: 9 of 15
sunglasses, and cases therefor; Retailing of bags and articles for
packaging, storage and wrapping of foodstuffs; Retailing of hair
ornaments; Retailing of fertiliser for soil and potting soil; Retailing of
meat, fish, poultry and game, meat extracts, preserved, frozen, dried
and cooked fruits and vegetables, jellies, jams, compotes, eggs, milk
and milk products, edible oils and fats; Retailing of 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; Retailing of grains and agricultural,
horticultural and forestry products, fresh fruits and vegetables, seeds,
natural plants and flowers, foodstuffs for animals, malt; Retailing of
beers, mineral and aerated waters and other non-alcoholic beverages,
fruit beverages and fruit juices, syrups and other preparations for
making beverages, alcoholic beverages; Retailing of tobacco,
smokers’ articles, matches.
Preliminary remark
The parties comment on the scope of protection of the earlier mark as far as
‘supermarket services’ in Class 39 are concerned. According to the applicant since
these services are classified in Class 39 they should be interpreted as relating to
‘transport, packaging and storage of goods for supermarkets’. According to the
opponent, it was not possible to get protection for retail and wholesale services under
the wording of the Nice Classification in force at the time of filing the application and
the best place for services relating to the commercial activities of a supermarket was
in Class 39.
The Opposition Division notes first of all that the Nice Classification serves only
administrative purposes. It changes during the years in order to better reflect the
market reality. Therefore, the scope of protection of the opponent’s services should
be determined by taking into account the literal and natural meaning of the services
bearing in mind the edition of the Nice Classification in force at the time of filing the
application (the V. edition) and not its current edition/version.
Indeed the V. edition of the Nice Classification did not explicitly include retail or
supermarket services. Moreover, according to the explanatory notes regarding
Class 35 (where retail services are nowadays classified) activity of an enterprise the
primary function of which was the sale of goods was explicitly excluded. Therefore,
supermarket services had necessarily to be applied for registration in a different class
such as Class 39 which does not mean that they have to be interpreted with view to
this class’ heading and not according to their natural meaning. Therefore, the
services for which the earlier mark enjoys protection are supermarket services as
such and not transport, packaging and storage of goods for supermarkets as the
applicant claims. As far as their nature is concerned supermarket services can be
defined as the bringing together for the benefit of others of a variety of consumer
goods, mainly foodstuff (in the broadest sense, including also beverages) and
household supplies enabling customers to conveniently view and purchase those
goods.
Comparison
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
Decision on Opposition No B 2 438 599 page: 10 of 15
sales outlets, the producers, the method of use and whether they are in competition
with each other or complementary to each other.
Retail is commonly defined as the action or business of selling goods or commodities
in relatively small quantities for use or consumption rather than for resale (as
opposed to wholesale, which is the sale of commodities in quantity, usually for
resale).
Retail services of specific goods are considered similar to retail services of other
specific goods. These services have the same nature since both are retail services,
the same purpose of allowing consumers to conveniently satisfy different shopping
needs, and the same method of use.
Bearing in mind the above principles and the reasoning for similarity provided therein
it is considered that the applicant’s services in Class 35 related to retail services,
namely: Retail services for pharmaceutical, veterinary and sanitary preparations and
medical supplies; Retail services relating to food; Retail services connected with the
sale of clothing and clothing accessories; Retail services in relation to alcoholic
beverages (except beer); Retail services in relation to lighting; Retail services in
relation to cutlery; Retail services in relation to tableware; Retail services in relation
to dietetic preparations; Retail services in relation to festive decorations; Retail
services in relation to cookware; Retail services in relation to hygienic implements for
humans; Retail services in relation to hygienic implements for animals; Retail
services in relation to horticulture products; Retail services in relation to foodstuffs;
Retail services in relation to fodder for animals; Retail services in relation to animal
grooming preparations; Retail services connected with stationery; Retail services in
relation to toys; Retail services in relation to dietary supplements; Retail services in
relation to toiletries; Retail services in relation to bags; Retail services in relation to
sewing articles; Retail services in relation to sporting articles; Retail services in
relation to games; Retail services in relation to jewellery; Retail services in relation to
beauty implements for humans; Retail services in relation to beauty implements for
animals; Retail services in relation to cleaning preparations; Retailing of candles and
wicks for lighting purposes, briquettes, fuels, charcoal and lighter fluids for
barbecues; Retailing of dental preparations and articles; Retailing of cleaning and
fragrancing preparations; Retailing of apparatus and instruments for accumulating
and storing electricity, including batteries; Retailing of spectacles and sunglasses,
and cases therefor; Retailing of bags and articles for packaging, storage and
wrapping of foodstuffs; Retailing of hair ornaments; Retailing of fertiliser for soil and
potting soil; Retailing of meat, fish, poultry and game, meat extracts, preserved,
frozen, dried and cooked fruits and vegetables, jellies, jams, compotes, eggs, milk
and milk products, edible oils and fats; Retailing of 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; Retailing of grains and
agricultural, horticultural and forestry products, fresh fruits and vegetables, seeds,
natural plants and flowers, foodstuffs for animals, malt; Retailing of beers, mineral
and aerated waters and other non-alcoholic beverages, fruit beverages and fruit
juices, syrups and other preparations for making beverages, alcoholic beverages;
Retailing of tobacco, smokers’ articles, matches are at least similar to a low degree to
the opponent’s ‘supermarket services’.
The contested Wholesale services in relation to cleaning articles; Wholesale services
in relation to non-alcoholic beverages; Wholesale services in relation to clothing;
Wholesale services in relation to disposable paper products; Wholesale services in
relation to headgear; Wholesale services in relation to footwear; Wholesale services
Decision on Opposition No B 2 438 599 page: 11 of 15
in relation to preparations for making beverages are considered at least similar to a
low degree to the opponent’s supermarket services as they can coincide in nature
and provider. Moreover, they complement each other.
The remaining wholesale services, namely: wholesale services for pharmaceutical,
veterinary and sanitary preparations and medical supplies are dissimilar to the
opponent’s services, since they relate to different products (unlike the goods in the
previous paragraph) which cannot normally be found in supermarkets. Moreover,
they are not usually provided by the same companies. The link of complementarity is
also missing because of the different goods subject to the two services. No other
coinciding criteria can be established which could give rise to a level of similarity
between the services.
Decision on Opposition No B 2 438 599 page: 12 of 15
b) 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 are directed at the public at large
(as far as the retail services are concerned) and at trade professionals (as far as the
wholesale services are concerned). The degree of attention is normal.
c) The signs
NETTO SUPERMERCADOS
Earlier trade mark Contested sign
The relevant territory is Spain.
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 is a word mark comprising the elements ‘NETTO’ and
‘SUPERMERCADOS’. The contested sign is the verbal element ‘NETTO’
represented in a rather standard but heavily bold typescript, where each letter is
framed in yellow. Both marks have no elements that can be considered dominant
(visually more eye-catching) than other elements.
The element ‘SUPERMERCADOS’ of the earlier mark in relation to ‘supermarket
services’ is non-distinctive. The verbal element ‘NETTO’ contained in both marks
does not have a meaning in Spanish. It is also to be noted that the doubled letter ‘T’
is very uncommon for the Spanish language in general and is as such rather striking
and attracts the consumer’s attention.
When signs consist of both verbal and figurative components, in principle, the verbal
component of the sign usually has a stronger impact on the consumer than the
figurative component. This is because the public does not tend to analyse signs and
will more easily refer to the signs in question by their verbal element than by
describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace,
EU:T:2005:289, § 37).
Visually and aurally, the signs coincide in ‘NETTO’. They differ in
‘SUPERMERCADOS’ of the earlier mark and visually also in the stylisation of the
contested sign as described above. Bearing in mind the non-distinctive character of
the verbal element ‘SUPERMERCADOS’ the signs are visually and aurally highly
similar.
Decision on Opposition No B 2 438 599 page: 13 of 15
Conceptually, neither of the signs has a meaning as a whole. Although the verbal
element ‘SUPERMERCADOS’ will evoke a concept, this element is non-distinctive
and cannot indicate the commercial origin. Moreover, the similarity between the signs
does not lie in this element. Since a conceptual comparison is not possible, the
conceptual aspect does not influence the assessment of the similarity of the signs.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) 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 services in question from the perspective of the public in the
relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as
normal, despite the presence of a non-distinctive element in the mark, as stated
above in section c) of this decision.
e) Global assessment, other arguments and conclusion
Account is taken of 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).
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).
Some of the contested services are similar (to various degrees) to the opponent’s
services. Others have been found dissimilar to the opponent’s services.
The signs are visually and aurally similar to a high degree on behalf of the common
verbal element ‘NETTO’. The earlier mark is of average distinctiveness and the level
of attention of the relevant consumers is average.
Taking into account the above, in particular the similarity between the signs and the
conflicting services the Opposition Division finds that there is a likelihood of confusion
on the part of the Spanish public and therefore the opposition is partly well founded
on the basis of the opponent’s Spanish trade mark registration. This applies also to
the services found only similar to a low degree since the high similarity of signs
offsets the lesser degree of similarity between these services.
Decision on Opposition No B 2 438 599 page: 14 of 15
The applicant refers to case-law which it considers relevant to the case at hand in the
sense that it supports the arguments of the applicant supporting the conclusion that
there is no likelihood of confusion between the conflicting signs.
It must be noted that 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 it is
settled case-law that the legality of decisions is to be assessed purely by reference to
the CTMR, and not the Office’s practice in earlier decisions (judgment of 30/06/2004,
T-281/02, ‘Mehr für Ihr Geld’).
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.
The Opposition Division duly considered the decisions referred to by the applicant
and does not find them relevant to the case at hand, which particularities cannot be
compared to the particularities of the previous cases. First of all, the signs under
comparison in the cited decisions are completely different as can be seen in the
applicant’s submissions. Second, the particularities of the factual background of
these other decisions and the findings of the Opposition Division and the Boards with
regard to the distinctive character in relation to the goods covered by the marks are
quite different. All in all, the decisions referred to by the applicant are of no relevance
for the current case.
The rest of the contested 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.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 109(3)
EUTMR, where each party succeeds on some heads and fails on others, or if
reasons of equity so dictate, the Opposition Division will decide a different
apportionment of costs.
Since the opposition is successful for only some of the contested services, both
parties have succeeded on some heads and failed on others. Consequently, each
party has to bear its own costs.
Decision on Opposition No B 2 438 599 page: 15 of 15
The Opposition Division
Denitza STOYANOVA-
VALCHANOVA
Plamen IVANOV André Gerd Günther
BOSSE
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.