BioUnique | Decision 2382953 – UNION DETALLISTAS ESPAÑOLES S COOP. UNIDE v. Delinuts B.V.

OPPOSITION No B 2 382 953

Union Detallistas Españoles S Coop. Unide, Cl. Gregorio Sanchez Herraez, 14, 28033 Madrid, Spain (opponent), represented by Vadimark, S.L.,Galería de Vallehermoso, 4 -1º, 28003 Madrid, Spain (professional representative)

a g a i n s t

Delinuts B.V., Radonstraat 12, 6718 WS Ede, The Netherlands (applicant]), represented by Novagraaf Nederland B.V., Hoogoorddreef 5, 1101 BA Amsterdam, The Netherlands (professional representative).

On 31/08/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 382 953 is partially upheld, namely for the following contested goods and services:

Class 29: Meat, fish, poultry and game; Meat extracts; Eggs, milk and milk products; Edible oils and fats; Protein milk; Albumen for culinary purposes; Aloe vera prepared for human consumption; Anchovy; Bone oil, edible; Prepared nuts; Fish roe, prepared; Seeds, prepared; Sunflower seeds, prepared; Butter; Buttercream; Dates; Edible oils; Palm kernel oil for food; Colza oil for food; Edible fats; Eggs; Powdered eggs; Yolk of eggs; White of eggs; Shrimps, not live; Jellies; Ground almonds; Curd; Poultry, not live; Non-alcoholic eggnog; Ham; Herrings; Tripe; Salted meats; Cheese products; Caviar; Kefir [milk beverage]; Kefir [milk beverage]; Coconut butter; Coconut, desiccated; Coconut oil; Coconut oil and fat [for food]; Lobsters, not live; Raisins; Spiny lobsters, not live; Liver; Liver pâté; Flaxseed oil for culinary purposes; Corn oil; Margarine; Milk; Milk beverages, milk predominating; Ferments (Milk -) for culinary purposes; Milk products; Whey; Animal marrow for food; Milk shakes; Mussels, not live; Oysters, not live; Olive oil for food; Palm oil for food; Clams, not live; Piccalilli; Peanut butter; Peanuts, prepared; Pollen prepared as foodstuff; Fermented milk; Lard; Cream [dairy products]; Ryazhenka [fermented baked milk]; Sardines; Crustaceans, not live; Shellfish, not live; Sesame oil; Whipped cream; Snail eggs for consumption; Smetana [sour cream]; Soya milk [milk substitute]; Bacon; Prawns, not live; Tofu; Suet for food; Tuna fish; Pork; Fat-containing mixtures for bread slices; Fatty substances for the manufacture of edible fats; Fish; Canned fish; Fish fillets; Fish, preserved; Foods made from fish; Salted fish; Fish meal for human consumption; Mousses (Fish -); Meat; Meat; Canned meat; Meat extracts; Preserved meat; Meat jellies; Game; Sausages; Sausages; Sausages in batter; Yoghurt; Salmon; Silkworm chrysalis, for human consumption; Crayfish, not live; Sunflower oil for food.

Class 30: Coffee, tea, cocoa and artificial coffee; Rice, sago; Flour and preparations made from cereals, bread, pastry and confectionery, edible ices; Sugar, honey, treacle; Yeast, baking-powder; Ice; Almond paste; Baking powder; Baking soda [bicarbonate of soda for baking purposes]; Pastries; Rusks; Gluten prepared as foodstuff; Macaroons [pastry]; Bean meal; Petit-beurre biscuits; Bread; Bread rolls; Cocoa; Cocoa beverages with milk; Buns; Cheeseburgers [sandwiches]; Chocolate; Chocolate beverages with milk; Mousses (Chocolate -); Chicory [coffee substitute]; Edible ices; Couscous [semolina]; Crackers; Cream of tartar for culinary purposes; Custard; Dough; Cake dough; Farinaceous food pastes; Dessert mousses [confectionery]; Cocoa-based beverages; Drinking chocolate; Coffee-based beverages; Tea-based beverages; Stick liquorice [confectionery]; Liquorice [confectionery]; Fondants; Cake powder; Husked oats; Crushed oats; Farinaceous foods; Husked barley; Barley (Crushed -); Yeast; Ferments for pastes; Glucose for culinary purposes; Gluten additives for culinary purposes; Chips [cereal products]; Semolina; Groats for human food; Halvah; Oatmeal; Oat flakes; Honey; Ice, natural or artificial; Iced tea; Sweetmeats [candy]; Capers; Caramels; Chewing gum, not for medical purposes; Catsup; Cookies; Ice; Coffee; Coffee flavorings [flavourings]; Coffee beverages with milk; Artificial coffee; Royal jelly; Flaxseed for human consumption; Spring rolls; Noodle-based prepared meals; Macaroni; Maltose; Marzipan; Mayonnaise; Flour; Wheat flour; Flour-milling products; Syrups and treacles; Syrups and treacles; Mustard meal; Malt biscuits; Malt for human consumption; Muesli; Nutmegs; Sweeteners (Natural -); Noodles; Coffee (Unroasted -); Unleavened bread; Palm sugar; Breadcrumbs; Pancakes; Gruel, with a milk base, for food; Sauces for use with pasta; Pasties; Pies; Lozenges [confectionery]; Peppermint candy; Mint for confectionery; Pesto [sauce]; Petits fours [cakes]; Pizza; Vegetal preparations for use as coffee substitutes; Pralines; Bee glue; Puddings; Quiches; Ravioli; Rice; Rice cakes; Ice cream; Sago; Dressings for salad; Sweetmeats [candy]; Sorbets; Spaghetti; Sugar; Ham glaze; Cake frosting [icing]; Sweetmeats [candy]; Confectionery for decorating Christmas trees; Almond confectionery; Peanut confectionery; Cakes; Tabbouleh; Tacos;; Tapioca flour for food; Tea; Tortillas; Vermicelli [noodles]; Cereal-based snack food; Rice-based snack food; Tarts; Meat pies; Meat gravies; Oat-based food; Waffles; Yoghurt (Frozen -) [confectionery ices]; Starch for food; Leaven.

Class 31: Live animals; Seeds, natural plants; Foodstuffs for animals, malt; Cereals (Residual products of -) for animal consumption; Algarovilla for animal consumption; Algae for animal consumption; Aloe vera plants; Almonds [fruits]; Berries, fresh fruits; Nettles; Cocoa beans, raw; Chicory, fresh; Chicory roots; Menagerie animals; Distillery waste for animal consumption; Draff; Beverages for pets; Grapes, fresh; Edible chews for animals; Silkworm eggs; Yeast for animal consumption; Hazelnuts; Dog biscuits; Hay; Juniper berries; Locust beans; Lime for animal forage; Rape cake for cattle; Lobsters, live; Spiny lobsters, live; Fishing bait, live; Live animals; Flax meal [fodder]; Flaxseed meal for animal consumption; Flaxseed for animal consumption; Maize cake for cattle; Meal for animals; Mash for fattening livestock; Shellfish, live; Nuts [fruits]; Oysters, live; Peanut cake for animals; Peanut meal for animals; Peanuts, fresh; Plants; Livestock fattening preparations; Rice meal for forage; Rose bushes; Crustaceans, live; Shellfish, live; Cuttle bone for birds; Sesame; Stall food for animals; Straw [forage]; Wheat germ for animal consumption; Oil cake; Foodstuffs and fodder for animals; Strengthening animal forage; Fish spawn; Fish meal for animal consumption; Live fish; Foodstuffs for animals; Egg laying poultry (Preparations for -); Pet food; Bird food; Groats for poultry; Vine plants; Seeds; Grains for animal consumption; Bran mash for animal consumption; Silkworms; Crayfish, live; Salt for cattle.

Class 32: Mineral and aerated waters and other non-alcoholic beverages; Fruit beverages and fruit juices; Syrups and other preparations for making beverages.

Class 35: Retailing and wholesaling of meat, fish, poultry and game, meat extracts, eggs, milk and milk products, edible oils and fats, protein milk, albumen for culinary purposes, alginates for culinary purposes, aloe vera prepared for human consumption, anchovies, edible bone oil, prepared nuts, processed fish spawn, processed seeds, processed sunflower seeds, butter, buttercream, dates, edible oils, palm kernel oil for food, rape oil for food, edible fats, edible birds' nests, eggs, powered eggs, yolk of eggs, white of eggs, shrimps, not live, gelatine, ground almonds, milk curd, poultry, not live, non-alcoholic egg nog, ham, herrings, tripe, salted meats, cheese, rennet, caviar, kefir (milk beverage), koumiss (milk beverage), coconut butter, desiccated coconut, coconut oil, coconut fat, lobsters, not live, raisins, spiny lobsters, not live, lecithin for culinary purposes, liver, liver pâté, linseed oil for culinary purposes, maize oil, margarine, milk, milk beverages, milk predominating, milk ferments for culinary purposes, milk products, whey, animal marrow for food, milkshakes, mussels, not live, oysters, not live, olive oil for food, palm oil for food, clams, not live, pectin for culinary purposes, piccalilli, pickles, peanut butter, processed peanuts, pollen prepared as foodstuff, prostokvasha (soured milk), lard for food, cream (dairy products), ryazhenka (fermented baked milk), sardines, crustaceans, not live, shellfish, not live, sesame oil, whipped cream, snail eggs for consumption, smetana (sour cream), soya milk (milk substitute), bacon, prawns, not live, not live, tofu, suet for food, tuna fish, pork, fat-containing mixtures for bread slices, fatty substances for the manufacture of edible fats, fish, not live, tinned fish, fish fillets, preserved fish, foods prepared from fish, salted fish, isinglass for food, fish meal for human consumption, fish mousses, meat, charcuterie, tinned meat, meat extracts, meat, preserved, meat jellies, game, not live, black pudding, sausages, sausages in batter, yogurt, salmon, silkworm chrysalis, for human consumption, crayfish, not live, sunflower oil for food, coffee, tea, cocoa, artificial coffee, rice, tapioca, sago, flour and preparations made from cereals, bread, pastry and confectionery, ices, sugar, honey, treacle, yeast, baking-powder, ice, almond paste, baking soda (bicarbonate of soda for cooking purposes), pastries, rusks, gluten prepared as foodstuff, binding agents for ice cream, sausage binding materials, macaroons (pastry), bean meal, petit-beurre biscuits, bread, bread rolls, cocoa, cocoa beverages with milk, buns, cheeseburgers (sandwiches), chocolate, chocolate beverages with milk, chocolate mousses, chicory (coffee substitute), ices, couscous (semolina), crackers, cream of tartar for culinary purposes, custard, dough, pastry, pasta, dessert mousses (confectionery), cocoa-based beverages, chocolate-based beverages, coffee-based beverages, tea-based beverages, stick liquorice (confectionery), liquorice (confectionery), essences for foodstuffs, except etheric essences and essential oils, fondants (confectionery), cake powder, husked oats, crushed oats, farinaceous foods, husked barley, crushed barley, yeast, ferments for pastes, glucose for culinary purposes, gluten additives for culinary purposes, chips (cereal products), semolina, groats for human food, halvah, oatmeal, oat flakes, honey, ice, natural or artificial, iced tea, candy, capers, caramels (candy), chewing gum, ketchup (sauce), cookies, ice for refreshment, coffee, coffee flavourings, coffee beverages with milk, artificial coffee, royal jelly, linseed for human consumption, spring rolls, noodle-based prepared meals, macaroni, maltose, marzipan, mayonnaise, flour, wheat flour, flour-milling products, molasses for food, golden syrup, mustard meal, malt biscuits, malt extract for food, malt for human consumption, muesli, nutmegs, natural sweeteners, ribbon vermicelli, unroasted coffee, unleavened bread, palm sugar, breadcrumbs, pancakes, gruel, with a milk base, for food, pasta sauce, pasties, pies, lozenges (confectionery), peppermint sweets, mint for confectionery, pesto (sauce), petits fours (cakes), pizzas, vegetal preparations for use as coffee substitutes, powders for ice cream, pralines, meat tenderisers, for household purposes, preparations for stiffening whipped cream, bee glue, puddings, quiches, ravioli, rice, rice cakes, ice cream, sago, dressings for salad, candy, sorbets (ices), spaghetti, sugar, ham glaze, cake frosting (icing), sugar confectionery, confectionery for decorating Christmas trees, almond confectionery, peanut confectionery, sushi, cakes, tabbouleh, tacos, tapioca, tapioca flour for food, tea, tortillas, thickening agents for cooking foodstuffs, vermicelli (noodles), cereal-based snack food, rice-based snack food, tarts, meat pies, meat gravies, oat-based food, waffles, frozen yogurt (confectionery ices), sea water for cooking, starch for food, leaven, live animals, seeds, natural plants and flowers, foodstuffs for animals, malt, residual products of cereals for animal consumption, algarovilla for animal consumption, algae for animal consumption, aloe vera plants, almonds (fruits), berries, fresh fruits, flower bulbs, natural flowers, products for animal litter, trees, trunks of trees, nettles, fertilised eggs for hatching, raw cocoa beans, chicory (salad), chicory roots, pine cones, menagerie animals, distillery waste for animal consumption, draff, beverages for pets, dried flowers for decoration, fresh grapes, edible chews for animals, silkworm eggs, bred stock, aromatic sand for pets (litter), poultry, live, yeast for animal consumption, grains (cereals), oats, hazelnuts, dog biscuits, hay, hop cones, undressed timber, wood chips for the manufacture of wood pulp, juniper berries, locust beans, lime for animal forage, Christmas trees, mushroom spawn for propagation, seed germ for botanical purposes, coconuts, rape cake for cattle, copra, wheat, wreaths of natural flowers, lobsters, live, rough cork, spiny lobsters, live, live fishing bait, live animals, flax meal (fodder), linseed meal for animal consumption, linseed for animal consumption, maize cake for cattle, meal for animals, mash for fattening livestock, mussels, live, malt for brewing and distilling, sod, nuts (fruits), oysters, live, palm trees, palms (leaves of the palm tree), peanut cake for animals, peanut meal for animals, fresh peanuts, plants, dried plants for decoration, pollen (raw material), animal fattening preparations, rice meal for forage, unprocessed rice, rye, rose bushes, raw barks, unsawn timber, crustaceans, live, shellfish, live, cuttle bone for birds, sesame, stall food for animals, straw litter, straw (forage), bushes, sugarcane, bagasses of cane (raw material), wheat germ for animal consumption, litter peat, oil cake, fodder, strengthening animal forage, fish spawn, fish meal for animal consumption, fish, live, foodstuffs for animals, preparations for egg laying poultry, pet food, bird food, groats for poultry, residue in a still after distillation, vine plants, seedlings, seeds, grains for animal consumption, sanded paper for pets (litter), bran mash for animal consumption, silkworms, crayfish, live, salt for cattle, mineral and aerated waters and other non-alcoholic beverages, fruit beverages and fruit juices, syrups and other preparations for making beverages.

2. European Union trade mark application No 12 412 268 is rejected for all the above goods and services. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 412 268. The opposition is based on Spanish trade mark registrations No 1 795 079, ‘UNIDE, No 1 795 080,’UNIDE’, No 1 795 081,’UNIDE’, No 1 795 082,’UNIDE’, No 2 289 074,’UNIDE’, and No 828 187,’UNIDE’. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

On 02/06/2016 the Opposition Division rendered a decision which resulted in the partial refusal of the European Union trade mark application No 12 412 268 pursuant to Article 8(1)(b) EUTMR on the grounds that there was likelihood of confusion because the signs were similar and some of the goods were identical or similar.

The decision was appealed and the Board of Appeal decided in case R 1415/2016-5 on 12/05/2017. The Board’s decision annulled the contested decision and remitted the case to the Opposition Division for further prosecution. The Board considered the decision included goods and services that were not part of the application, as a restriction of the goods made by the applicant, at the time the decision was made, had not been taken into account.

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 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, Spanish trade marks No 1 795 079, No 1 795 080, No 1 795 081, No 1 795 082, No 2 289 074 and No 828 187.

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

The contested application was published on 23/04/2014. 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 23/04/2009 to 22/04/2014 inclusive. 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 1 795 079

Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams; eggs, milk and milk products; edible oils and fats.

Spanish trade mark registration No 1 795 080

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago and 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 1 795 081

Class 31: Agricultural, horticultural, forestry and grains products not included in other classes; live animals; fresh fruits and vegetables; seeds; natural plants and flowers; foodstuffs for animals; malt.

Spanish trade mark registration No 1 795 082

Class 32: Mineral and aerated waters and other non-alcoholic beverages; Fruit beverages and fruit juices; Syrups and other preparations for making beverages.

Spanish trade mark registration No 2 289 074

Class 35: Retail sale of diverse food products, drinks, household cleaning products and personal care products.

Spanish trade mark registration No 828 187

Class 39: Distribution services of food products.

According to Rule 22(3) EUTMIR, 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 and services in respect of which it is registered and on which the opposition is based.

On 26/03/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 31/05/2015 to submit evidence of use of the earlier trade marks. The period was extended at the opponent’s request until 31/07/2015. On 29/07/2015, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

Document 1: five invoices (more than 100 pages in total), two dated 02/08/2010 and the others dated 15/08/2011, 31/12/2011 and 02/08/2012, issued by the opponent to different entities in Spain (Madrid and Avila). The name of the opponent ‘S Coop UNIDE’ appears in all the invoices as the seller of the goods. A variety of goods (drinks, foodstuffs, cosmetic products, cleaning and hygiene products) are listed. The goods listed are referred to by different brands/names, and include, among many others, ‘UNIDE’ fruit juices, nectars, mineral water and refreshment drinks.

Document 2: 54 invoices dated between November 2009 and December 2013, issued to the opponent by 10 Spanish supplier companies. The documents are in Spanish and refer to sales of a variety of goods (cider and wine, cosmetic products, cleaning and hygiene products, bakery goods).

Document 3: a copy of UNIDE’s 2011 catalogue, with pictures of various goods (foodstuffs, cleaning and hygiene products, drinks) referred to using the sign ‘UNIDE’. The packaging bears the trade mark ‘UNIDE’.

Document 4: pictures of some goods bearing the trade mark ‘UNIDE’ (soft drinks, instant coffee, ice cream, biscuits, vinegar, canned vegetables).

Document 5: a printout from Wikipedia, dated 27/07/2015, of the entry for ‘UNIDE’. The document is in Spanish and details the opponent’s activities through the decades. It indicates that the name ‘UNIDE’ was adopted in 1993 and the type of industry in which the opponent is involved is defined as ‘commercial distribution’.

Document 6: printout of the results of a Google search for ‘UNIDE’. The entry for the opponent’s ‘UNIDE’ website appears at the top of the list of results.

Document 7: press articles about ‘UNIDE’:

a printout from www.bamadrid.com (Banco de Alimentos de Madrid), dated 2013, of an article about the UNIDE group;
a printout from www.camaramadrid.es of an interview in Spanish with UNIDE’s Expansion Director, dated July 2010;
a printout dated 09/07/2013 from www.granconsumo.tv mentioning that the opponent is continuing its expansion by opening 11 new supermarkets, five branded as ‘UNIDE’ and six branded as ‘UNIDE MARKET’, in different parts of Spain;
a printout from www.unicef.es about cooperation between UNIDE and UNICEF in the fight against hunger, dated 2011;
a news article published in Economía & Empresas, dated 21/10/2010, reporting on an interview with UNIDE’s Expansion Director;
a news article from diariodeburgos.es, dated 28/08/2010, about the opening of a new supermarket in Burgos.

Document 8: a printout in Spanish from www.franquiciashoy.es of an article, dated 11/02/2013, about the different types of supermarkets under the ‘UNIDE’ group

Document 9: copies of covers of the magazine El Detallista, dated 2009, 2010 and 2011, showing the trade mark ‘UNIDE’.

Document 10: a printout in Spanish of a page from UNIDE’s website about the locations of its retail outlets in Spain.

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 invoices and catalogues, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.

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 and services 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 invoices, press releases and printouts from the internet show that the place of use is Spain. This can be inferred from the language of the documents (Spanish), the Spanish media in which the articles were published, the currency mentioned (euros) and the fact that some addresses shown were in Spain. Therefore, the evidence relates to the relevant territory.

The invoices and the press releases are all dated between 2009 and 2013; therefore, all of the evidence is dated within the relevant period.

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 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 and promotional material (although this material is in Spanish, pictures of the goods and the trade mark are clearly displayed), provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

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 national trade marks 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.

The evidence shows that the mark has been used as registered for some of the goods and services for which the mark 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).

However, the evidence filed by the opponent does not show genuine use of the trade marks for all the goods and services 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 and services:

Spanish trade mark registration No 1 795 079

Class 29: Meat, fish, poultry; preserved, dried and cooked fruits and vegetables; jellies, jams; eggs, milk and milk products; edible oils and fats.

Spanish trade mark registration No 1 795 080

Class 30: Coffee, tea, cocoa, sugar, rice, artificial coffee; flour and preparations made from cereals; bread, pastry and confectionery; ices; honey, salt; vinegar, sauces (condiments); spices.

Spanish trade mark registration No 1 795 081

Class 31: fresh fruits and vegetables; foodstuffs for animals.

Spanish trade mark registration No 1 795 082

Class 32: Mineral and aerated waters and other non-alcoholic beverages; Fruit beverages and fruit juices.

Spanish trade mark registration No 2 289 074

Class 35: Retail sale of diverse food products, drinks, household cleaning products and personal care products.

Therefore, the Opposition Division will only consider the abovementioned goods and services 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 goods and services

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

Spanish trade mark registration No 1 795 079

Class 29: Meat, fish, poultry; preserved, dried and cooked fruits and vegetables; jellies, jams; eggs, milk and milk products; edible oils and fats.

Spanish trade mark registration No 1 795 080

Class 30: Coffee, tea, cocoa, sugar, rice, and artificial coffee; flour and preparations made from cereals; bread, pastry and confectionery; ices; honey, salt; vinegar, sauces (condiments); spices

Spanish trade mark registration No 1 795 081

Class 31: fresh fruits and vegetables; foodstuffs for animals

Spanish trade mark registration No 1 795 082

Class 32: Mineral and aerated waters and other non-alcoholic beverages; Fruit beverages and fruit juices

Spanish trade mark registration No 2 289 074

Class 35: Retail sale of diverse food products, drinks, household cleaning products and personal care products.

The contested goods and services, following two limitations made by the applicant, are the following:

Class 29: Meat, fish, poultry and game; Meat extracts; Eggs, milk and milk products; Edible oils and fats; Protein milk; Albumen for culinary purposes; Alginates for culinary purposes; Aloe vera prepared for human consumption; Anchovy; Bone oil, edible; Prepared nuts; Fish roe, prepared; Seeds, prepared; Sunflower seeds, prepared; Butter; Buttercream; Dates; Edible oils; Palm kernel oil for food; Colza oil for food; Edible fats; Edible birds' nests; Eggs; Powdered eggs; Yolk of eggs; White of eggs; Shrimps, not live; Jellies; Ground almonds; Curd; Poultry, not live; Non-alcoholic eggnog; Ham; Herrings; Tripe; Salted meats; Cheese products; Rennet; Caviar; Kefir [milk beverage]; Kefir [milk beverage]; Coconut butter; Coconut, desiccated; Coconut oil; Coconut oil and fat [for food]; Lobsters, not live; Raisins; Spiny lobsters, not live; Lecithin for culinary purposes; Liver; Liver pâté; Flaxseed oil for culinary purposes; Corn oil; Margarine; Milk; Milk beverages, milk predominating; Ferments (Milk -) for culinary purposes; Milk products; Whey; Animal marrow for food; Milk shakes; Mussels, not live; Oysters, not live; Olive oil for food; Palm oil for food; Clams, not live; Pectin for culinary purposes; Piccalilli; Peanut butter; Peanuts, prepared; Pollen prepared as foodstuff; Fermented milk; Lard; Cream [dairy products]; Ryazhenka [fermented baked milk]; Sardines; Crustaceans, not live; Shellfish, not live; Sesame oil; Whipped cream; Snail eggs for consumption; Smetana [sour cream]; Soya milk [milk substitute]; Bacon; Prawns, not live; Tofu; Suet for food; Tuna fish; Pork; Fat-containing mixtures for bread slices; Fatty substances for the manufacture of edible fats; Fish; Canned fish; Fish fillets; Fish, preserved; Foods made from fish; Salted fish; Isinglass for food; Fish meal for human consumption; Mousses (Fish -); Meat; Meat; Canned meat; Meat extracts; Preserved meat; Meat jellies; Game; Sausages; Sausages; Sausages in batter; Yoghurt; Salmon; Silkworm chrysalis, for human consumption; Crayfish, not live; Sunflower oil for food.

Class 30: Coffee, tea, cocoa and artificial coffee; Rice, tapioca, sago; Flour and preparations made from cereals, bread, pastry and confectionery, edible ices; Sugar, honey, treacle; Yeast, baking-powder; Ice; Almond paste; Baking powder; Baking soda [bicarbonate of soda for baking purposes]; Pastries; Rusks; Gluten prepared as foodstuff; Ice cream (Binding agents for -); Sausage binding materials; Macaroons [pastry]; Bean meal; Petit-beurre biscuits; Bread; Bread rolls; Cocoa; Cocoa beverages with milk; Buns; Cheeseburgers [sandwiches]; Chocolate; Chocolate beverages with milk; Mousses (Chocolate -); Chicory [coffee substitute]; Edible ices; Couscous [semolina]; Crackers; Cream of tartar for culinary purposes; Custard; Dough; Cake dough; Farinaceous food pastes; Dessert mousses [confectionery]; Cocoa-based beverages; Drinking chocolate; Coffee-based beverages; Tea-based beverages; Stick liquorice [confectionery]; Liquorice [confectionery]; Essences for foodstuffs, except etheric essences and essential oils; Fondants; Cake powder; Husked oats; Crushed oats; Farinaceous foods; Husked barley; Barley (Crushed -); Yeast; Ferments for pastes; Glucose for culinary purposes; Gluten additives for culinary purposes; Chips [cereal products]; Semolina; Groats for human food; Halvah; Oatmeal; Oat flakes; Honey; Ice, natural or artificial; Iced tea; Sweetmeats [candy]; Capers; Caramels; Chewing gum, not for medical purposes; Catsup; Cookies; Ice; Coffee; Coffee flavorings [flavourings]; Coffee beverages with milk; Artificial coffee; Royal jelly; Flaxseed for human consumption; Spring rolls; Noodle-based prepared meals; Macaroni; Maltose; Marzipan; Mayonnaise; Flour; Wheat flour; Flour-milling products; Syrups and treacles; Syrups and treacles; Mustard meal; Malt biscuits; Malt extract for food; Malt for human consumption; Muesli; Nutmegs; Sweeteners (Natural -); Noodles; Coffee (Unroasted -); Unleavened bread; Palm sugar; Breadcrumbs; Pancakes; Gruel, with a milk base, for food; Sauces for use with pasta; Pasties; Pies; Lozenges [confectionery]; Peppermint candy; Mint for confectionery; Pesto [sauce]; Petits fours [cakes]; Pizza; Vegetal preparations for use as coffee substitutes; Powders for ice cream; Pralines; Meat tenderizers, for household purposes; Whipped cream (Preparations for stiffening -); Bee glue; Puddings; Quiches; Ravioli; Rice; Rice cakes; Ice cream; Sago; Dressings for salad; Sweetmeats [candy]; Sorbets; Spaghetti; Sugar; Ham glaze; Cake frosting [icing]; Sweetmeats [candy]; Confectionery for decorating Christmas trees; Almond confectionery; Peanut confectionery; Sushi; Cakes; Tabbouleh; Tacos; Tapioca; Tapioca flour for food; Tea; Tortillas; Thickening agents for cooking foodstuffs; Vermicelli [noodles]; Cereal-based snack food; Rice-based snack food; Tarts; Meat pies; Meat gravies; Oat-based food; Waffles; Yoghurt (Frozen -) [confectionery ices]; Sea water for cooking; Starch for food; Leaven.

Class 31: Live animals; Seeds, natural plants and flowers; Foodstuffs for animals, malt;Cereals (Residual products of -) for animal consumption; Algarovilla for animal consumption; Algae for animal consumption; Aloe vera plants; Almonds [fruits]; Berries, fresh fruits; Flower bulbs; Flowers; Bedding and litter for animals; Trees; Trunks of trees; Nettles; Eggs for hatching, fertilised; Cocoa beans, raw;Chicory, fresh; Chicory roots; Pine cones; Menagerie animals; Distillery waste for animal consumption; Draff; Beverages for pets; Flowers, dried, for decoration; Grapes, fresh; Edible chews for animals; Silkworm eggs; Bred stock; Pets (Aromatic sand for -) [litter]; Live poultry; Yeast for animal consumption; Oats; Hazelnuts; Dog biscuits; Hay; Hop cones; Undressed timber; Wood chips for the manufacture of wood pulp; Juniper berries; Locust beans; Lime for animal forage; Christmas trees; Mushroom spawn for propagation; Germ (Seed -) for botanical purposes; Rape cake for cattle; Copra; Wheat; Wreaths of natural flowers; Lobsters, live; Rough cork; Spiny lobsters, live; Fishing bait, live; Live animals; Flax meal [fodder]; Flaxseed meal for animal consumption; Flaxseed for animal consumption; Maize cake for cattle; Meal for animals; Mash for fattening livestock; Shellfish, live; Malt for brewing and distilling; Natural turf; Nuts [fruits]; Oysters, live; Palm trees; Palms [leaves of the palm tree]; Peanut cake for animals; Peanut meal for animals; Peanuts, fresh; Plants; Plants, dried, for decoration; Pollen [raw material]; Livestock fattening preparations; Rice meal for forage; Unprocessed rice; Rye seed; Rose bushes; Raw barks; Raw timber; Crustaceans, live; Shellfish, live; Cuttle bone for birds; Sesame; Stall food for animals; Straw litter; Straw [forage]; Bushes; Sugarcane; Bagasses of cane [raw material]; Wheat germ for animal consumption; Bedding and litter for animals; Oil cake; Foodstuffs and fodder for animals; Strengthening animal forage; Fish spawn; Fish meal for animal consumption; Live fish; Foodstuffs for animals; Egg laying poultry (Preparations for -); Pet food; Bird food; Groats for poultry; Residue in a still after distillation; Vine plants; Seedlings; Seeds; Grains for animal consumption; Pets (Sanded paper for -) [litter]; Bran mash for animal consumption; Silkworms; Crayfish, live; Salt for cattle.

Class 32: Mineral and aerated waters and other non-alcoholic beverages; Fruit beverages and fruit juices; Syrups and other preparations for making beverages.

Contested goods in Class 29

Meat, fish, poultry; jellies, eggs, milk and milk products; edible oils and fats are identically included in both lists of goods and services.

The contested anchovy; fish roe, prepared; shrimps, not live; poultry, not live; ham; herrings; tripe; salted meats; caviar; lobsters, not live; spiny lobsters, not live; liver; liver pâté; animal marrow for food; mussels, not live; oysters, not live; clams [not live]; sardines; crustaceans, not live; shellfish, not live; bacon; prawns, not live; tuna fish; pork; fish; canned fish; fish fillets; fish preserved; salted fish; foods made from fish; fish meal for human consumption; mousses (fish-); meat, meat, canned meat; sausages; sausages in batter; salmon; silkworm chrysalis, for human consumption; crayfish, not live are included in the broad categories of the opponent’s meat, fish, poultry. Therefore, they are identical.

The contested aloe vera prepared for human consumption; prepared nuts; seeds, prepared; sunflowers seeds, prepared; dates; ground almonds, raisins, coconut, desiccated; raisins; piccalilli; peanut butter; peanuts, prepared; meat jellies; are included in the broad categories of the opponent’s preserved, dried and cooked fruits and vegetables; jellies, jams. Therefore, they are identical.

The contested albumen for culinary purposes; powdered eggs; yolk of eggs; white of eggs; snail eggs for consumption are included in the broad category of the opponent’s eggs. Therefore, they are identical.

The contested protein milk; butter; buttercream; curd; non-alcoholic egg nog; cheese products; kefir [milk beverage];; milk beverages, milk predominating; ferments (milk -) for culinary purposes; milk products; whey; milk shakes; fermented milk; cream [dairy products]; ryazhenka [fermented baked milk]; whipped cream; Smetana [sour cream]; soya milk [milk substitute]; tofu; yoghurt are included in the broad category of the opponent’s milk and milk products. Therefore, they are identical.

The contested bone oil, edible; edible oils, palm kernel oil for food; colza oil for food; edible fats, coconut butter; coconut desiccated, coconut oil, coconut oil and fat [for food]; flaxseed oil for culinary purposes; corn oil; margarine; olive oil for food; palm oil for food; lard; sesame oil; suet for food; fat-containing mixtures for bread slices; fatty substances for the manufacture of edible fats; sunflower oil for food are included in the broad category of the opponent’s edible oils and fats. Therefore, they are identical.

The contested preserved meat is included in the broad category of the opponent’s meat. Therefore, they are identical.

The contested game, is highly similar to the opponent’s meat, since they have the same nature and purpose, have the same distribution channels and sales outlets, and can be in competition with each other.

The contested meat extracts are similar to the opponent’s dried vegetables, since they can all be used as ingredients to make soups or give flavour to other dishes. The goods have the same purpose and can be in competition with each other.

The contested pollen prepared as foodstuff is similar to the opponent’s honey in Class 30, since they have the same producers and distribution channels and target the same public.

The contested alginates for culinary purposes; edible birds’ nests; rennet; lecithin for culinary purposes; pectin for culinary purposes; isinglass for food, are not similar to any of the opponent’s goods in Classes 29, 30, 31 and 32 or services in Class 35, since they have nothing relevant in common. Some of these contested goods are additives used by food producers, and others (edible birds’ nests) are a very particular food product that will normally be sold only through specialised channels, and they target a different public (food professionals).

Contested goods in Class 30

Coffee, tea, cocoa and artificial coffee; rice, flour and preparations made from cereals, bread, pastry and confectionery, sugar, honey, are identically included in both lists of goods and services.

The contested almond paste; pastries; cake dough; macaroons [pastry]; petit-beurre biscuits; buns; chocolate; mousses ( chocolate-); cream of tartar for culinary purposes; custard; cake dough; farinaceous food pastes; dessert mousses [confectionery]; stick liquorice [confectionery]; liquorice [confectionery]; fondants; halvah; puddings; Sweetmeats [candy]; caramels; chewing gum ( not for medical purposes ); cookies; marzipan; malt biscuits; lozenges [confectionery]; peppermint candy; mint for confectionery; petits fours [cakes]; pralines; sweetmeats [candy]; sorbets; cake frosting [icing]; sweetmeats candy; confectionery for decorating Christmas trees; almond confectionery; peanut confectionery; cakes; tarts; waffles; yogurt (frozen-) [confectionery ices] are included in the broad categories of the opponent’s pastry and confectionery. Therefore, they are identical.

The contested cocoa beverages with milk; chocolate beverages with milk; cocoa-based beverages; drinking chocolate; coffee-based beverages; tea-based beverages; iced tea; coffee beverages with milk; coffee (unroasted-); are included in the broad categories of the opponent’s coffee, tea, cocoa and artificial coffee. Therefore, they are identical.

The contested; rusks; gluten prepared as foodstuff; bread; bean meal; bread rolls; buns, couscous [semolina]; crackers; dough; husked oats crushed oats ; farinaceous foods; husked barley; barley (crushed -); gluten additives for culinary purposes; chips [cereal products]; semolina; groats for human food; oatmeal; oat flakes; flaxseed for human consumption; macaroni; maltose; wheat flour; flour-milling products; malt for human consumption; muesli; noodles; unleavened bread; breadcrumbs; pancakes; gruel, with a milk base, for food; pasties; pies; ravioli; sago; rice; rice cakes; sago; spaghetti; tabbouleh; tacos; tapioca flour; tortillas; vermicelli [noodles] ; cereal based snack food; rice-based snack food; oat-based food; starch for food are included in the broad categories of the opponent’s rice, flour and preparations made from cereals. Therefore, they are identical.

The contested nutmegs is included in the broad categories of the opponent’s sauces (condiments); spices. Therefore, they are identical.

The contested catsup; mayonnaise; sauces for use with pasta; pesto [sauce]; meat gravies; are included in the broad category of the opponent’s sauces (condiments). Therefore, they are identical.

The contested ice cream is included in the broad category of the opponent’s ices Therefore, they are identical.

The contested, dressings for salad; ham glaze are highly similar to the opponent’s sauces (condiments). They have the same nature, distribution channels and sales outlets and can be in competition with each other.

The contested capers are similar to the opponent’s sauces (condiments); spices. They have the same nature, distribution channels and sales outlets and can be in competition with each other.

The contested; cheeseburgers [sandwiches]; mustard meal; pizza; quiches, meat pies are similar to the opponent’s rice, flour and preparations made from cereals, bread. These goods are made of flour and other cereals, have the same nature, providers and distribution channels (food stores) and target the same public.

The contested chicory [coffee substitute]; vegetal preparations for use as coffee substitutes are similar to the opponent’s coffee, tea, cocoa and artificial coffee. They have the same nature, providers and distribution channels (food stores or specialised coffee and tea shops), are complementary and target the same public.

The contested bee glue; royal jelly, are similar to the opponent’s honey. They can be produced by the same providers, they target the same relevant public and they have the same distribution channels. Furthermore, they are in competition.

The contested treacle, syrups and treacles are similar to the opponent’s jams and jellies. They can be produced by the same providers, are sold through the same distribution channels and in the same sections of shops, and target the same public. They are in competition.

The contested glucose for culinary purposes; sweeteners (natural-), palm sugar are similar to the opponent’s honey. They can be produced by the same providers, are sold through the same distribution channels and in the same sections of shops, and target the same public. They are in competition.

The contested yeast; baking-powder; baking soda [bicarbonate of soda for baking purposes];cake powder; yeast; ferments for pastes; leaven are similar to the opponent’s flour. They can be produced by the same providers, are sold through the same distribution channels and in the same sections of shops, and target the same public. They are complementary.

The contested coffee flavourings [flavourings] are similar to a low degree to the opponent’s coffee. They have the same purpose (to obtain a coffee flavour) and method of use (both are used in drinks or food to enhance their flavour).

The contested spring rolls, noodle-based prepared meals; are similar to a low degree to the opponent’s preparations made from cereals. They are sold through the same distribution channels, target the same public and are in competition.

The contested; tapioca, edible ices, ice, ice, natural or artificial ; essences for foodstuffs, except etheric essences and essential oils; malt extract for food; ice cream (binding agents for-); sausage binding materials; powders for ice cream; meat tenderizers, for household purposes; whipped cream (preparations for stiffening); thickening agents for cooking foodstuffs; sea water for cooking are dissimilar to any of the opponent’s goods in Classes 29, 30, 31 and 32 or services in Class 35, since they have nothing relevant in common. Some of these contested goods are additives used by food producers (flavourings, binding agents, tenderisers, stiffening and thickening agents),. These goods have different natures and purposes. Furthermore, they satisfy different consumer needs and do not usually originate from the same undertakings. In addition, they are neither complementary nor in competition. Therefore, they are considered dissimilar.

The contested sushi; is dissimilar to any of the opponent’s goods in Classes 29, 30, 31 and 32 or services in Class 35, since they have nothing relevant in common. (sushi) is a particular prepared food product that does not fall under any of the established categories of food. They satisfy different consumer needs and do not usually originate from the same undertakings. In addition, they are not complementary.

Contested goods in Class 31

Fruit, fresh and foodstuffs for animals are identically contained in both lists of goods and services.

The contested seeds, malt; cereals (residual products of) for animal consumption; algarovilla for animal consumption; algae for animal consumption; distillery waste for animal consumption; draff; beverages for pets; edible chews for animals; yeast for animal consumption; dog biscuits; hay; lime for animal forage; rape cake for cattle; flax meal [fodder]; flaxseed meal for animal consumption; flaxseed for animal consumption; maize cake for cattle; meal for animals; mash for fattening livestock; peanut cake for animals; peanut meal for animals; livestock fattening preparations; rice meal for forage; cuttle bone for birds; stall food for animals; straw [forage]; wheat germ for animal consumption; oil cake; foodstuffs and fodder for animals; strengthening animal forage; fish meal for animal consumption; egg laying poultry (preparations for-); pet food; bird food; groats for poultry; grains for animal consumption; bran mash for animal consumption; salt for cattle are included in the broad category of the opponent’s foodstuffs for animals. Therefore, they are identical.

The contested almonds [fruits]; berries, fresh fruits; cocoa beans, raw; chicory fresh; chicory roots; fresh; grapes, fresh; hazelnuts; juniper berries; locust beans; nuts [fruits]; peanuts, fresh are included in the broad category of the opponent’s fresh fruits and vegetables. Therefore, they are identical.

The contested natural plants; plants are included in the broad category of the opponent’s foodstuffs for animals. Therefore, they are identical.

The contested aloe vera plants; nettles, rose bushes; vines plants are similar to a low degree to the opponent’s fresh vegetables in Class 31, as they may have the same distribution channels and relevant public.

The contested silkworm eggs; lobsters, live; spiny lobsters, live, fishing bait, live; live animals, shellfish, live; oysters, live; crustaceans, live; shellfish live; fish spawn, live fish; silkworms; crayfish, live are similar to a low degree to the opponent’s fish in Class 29. They have the same nature, can be found in the same outlets (food markets) and target the same public.

The contested bedding and litter for animals; trunks of trees; eggs for hatching, fertilised; pine cones; bred stock; pets (aromatic sand for-) [litter]; oats; hop cones; undressed timber; wood chips for the manufacture of wood pulp; Christmas trees; mushroom spawn for propagation; Germ (Seed-) for botanical purposes, copra; wheat; rough cork; malt for brewing and distilling; natural turf; palm trees; palms [leaves of the palm tree]; pollen [raw material]; unprocessed rice; rye seeds, raw barks; raw timber; straw litter; bushes; sugarcane; bagasses of cane [raw material];bedding and litter for animals; residue in a still after distillation; pets (sanded paper for -) [litter] are dissimilar to any of the opponent’s goods in Classes 29, 30, 31 and 32 or services in Class 35, since they have nothing relevant in common. Some of these contested goods are raw forestry products and others are products used for animals’ litter; they have different natures and are normally sold through different distribution channels.

Natural flowers; flower bulbs; flowers, trees, flowers, dried, for decoration; wreaths of natural flowers, plants, dried for decoration; seedlings are dissimilar to all the opponent’s goods in Classes 29, 30, 31 and 32 and services in Class 35, since they have nothing relevant in common. These goods are natural and dried plants and flowers for decoration and they have a different purpose (decoration) and method of use.

The contested menagerie animals; live poultry are dissimilar to all the opponent’s goods in Classes 29, 30, 31 and 32 and services in Class 35. It has a different purpose and method of use, and it does not have the same distribution channels.

Contested goods in Class 32

Mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices are identically included in both lists of goods and services.

The contested syrups and other preparations for making beverages are highly similar to the opponent’s fruit beverages. They can have the same purpose, producers, relevant public and distribution channels. Furthermore, they are in competition.

Contested services in Class 35

The contested retailing services in Class 35 concerning, a wide variety of foodstuffs and drinks are identical to the opponent’s services in Class 35. The services have the same nature, as both are retail services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use. Furthermore, depending on whether or not the goods in question are commonly retailed in the same outlets, they may have the same relevant public and distribution channels.

The contested retail services regarding live animals, agricultural, horticultural and forestry goods, are similar to the retail services of the opponent. The services have the same nature, purpose and method of use. Furthermore, depending on whether or not the goods in question are commonly retailed in the same outlets, they may have the same relevant public and distribution channels.

Wholesaling of diverse food products, drinks is similar to retail services of the same goods, since the goods that these services relate to are identical. Wholesaling is selling goods to other undertakings (retailers), which then sell the goods to end consumers. Even though their relevant public and distribution channels are different, these services have the same nature and purpose and they are complementary to each other. Moreover, wholesalers sometimes also provide retail services and, thus, the commercial origin of these services can be the same.

The contested wholesale services regarding live animals, agricultural, horticultural and forestry goods are similar to the retail services of the opponent. these services have the same nature and purpose and they are complementary to each other. Moreover, wholesalers sometimes also provide retail services and, thus, the commercial origin of these services can be the same.

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 and services found to be identical or similar are directed at the public at large (e.g. retail goods as foodstuffs) and at business customers with specific professional knowledge or expertise (distribution services). The degree of attention will be average.

The signs

UNIDE

Earlier trade marks

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 marks are word marks, ‘UNIDE’.

The contested sign is a figurative mark, composed of the word ‘BioUnique’ in bold white letters, underlined by a green line and with a green leaf replacing the dot in the second ‘i’, against a black rectangle. The English word ‘unique’ in the contested sign is very similar to the Spanish word ‘único’, so some Spanish consumers will perceive it as referring to ‘being the only one of its kind; unlike anything else’ (information extracted from Oxford Dictionaries on 13/07/2017 at https://en.oxforddictionaries.com/definition/unique ); for the other part of the relevant public, it will not have any meaning. Even for the part of the public for which it has a meaning that could be thought of as somehow laudatory, it clearly has a stronger distinctive character than the purely descriptive ‘Bio’ or the figurative elements, which can be considered banal (standard script, green underlining and leaf, and black rectangle). Therefore, the verbal element ‘unique’ is the most distinctive element of the contested mark.

None of the earlier marks has any element that could be considered clearly more distinctive than other elements. The earlier marks have no meaning and are of normal distinctiveness.

The elements ‘Bio’and the green leaf replacing the dot of the contested sign will be associated with organic or natural ingredients in a product. Bearing in mind that the relevant goods and services are foodstuffs, household and hygiene goods and retail of these goods, and agricultural, horticultural and forestry products, these element are non-distinctive for the entire relevant public because it conveys that the relevant goods are organic or environmentally friendly, and that the relevant services concern such goods.

None of the marks has any element that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the earlier signs are word marks consisting of five letters, namely ‘UNIDE’. The contested sign is figurative and consists of nine letters written in a stylised font, namely ‘BioUnique’. In addition, the contested sign contains some figurative elements: the fanciful script with green underlining and with a green leaf replacing the dot in the second ‘i’, and the black rectangle. Therefore, the signs are similar to the extent that they coincide in the letters ‘uni*e’. On the other hand, they differ in the letters ‘bio’ and ‘qu’ in the contested sign and the letter ‘d’ in the earlier marks, and in the figurative elements of the contested sign.

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; decisions of 19/12/2011, R 233/2011-4, Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Therefore, the signs are similar to an average degree, as they coincide in the letters ‘uni*e’.

Aurally, the pronunciation of the marks coincides in the sound of the letters ‘UNI-E’, which they have in common. The earlier marks will be pronounced as /u-ni-de/. The contested sign will be pronounced as /bi-o-u-ni-ke/. Therefore, the signs are similar to an average degree.

Conceptually, while the earlier marks have no meaning, the contested sign includes the verbal element ‘UNIQUE’, which a part of the relevant Spanish public will relate to its close Spanish counterpart ‘único’, meaning ‘being the only one of its kind; unlike anything else’. The beginning of the contested sign, ‘Bio’, is a very basic expression that will be understood in Spain and will be associated with ‘organic or natural ingredients in a product’, and the figurative element depicting a leaf evokes nature and thus may reinforce the meaning of ‘Bio’. The rest of the figurative elements (font, underlining, rectangle) do not have any meaning. Therefore, since the earlier signs will not be associated with any meaning, and the contested sign will be associated with the concepts of ‘Bio’ and a leaf and, for a part of the public, ‘unique’, the signs are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

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.

According to the opponent, the earlier mark Spanish trade mark registration No 2 289 074 has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

The opponent did not explicitly claim that the other earlier marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

Global assessment, other arguments and conclusion

The goods are partly identical, partly similar to different degrees and partly dissimilar, and the services are similar.

The signs are similar to the extent that the string of letters ‘Uni*e’ is fully included in the contested sign. The degree of distinctiveness of the earlier trade marks is normal.

The differences between the signs are confined to the element ‘BIO’ and the figurative elements of the contested sign, which all have been found weak for all the relevant goods and services, as explained in section c), as well as to the letters ‘qu’ of the contested sign versus the letter ‘d’ of the earlier marks. On the other hand, the signs coincide in four of the five letters of the only element of the earlier marks and four of the six letters of the most distinctive element of the contested sign, ‘UNI*E’, in the same order and with the same beginning and ending.

Likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse the two signs directly, believe that they come from the same undertaking or from economically-related ones (see for a definition of likelihood of association 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, and 29/09/1998, C-39/97, Canon, EU:C:1998:442).

In view of the foregoing, the Opposition Division is of the opinion that the similarities cannot be counteracted by the dissimilarities, and that the public would believe that the identical and similar goods and services come from the same undertaking or from economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s Spanish trade mark registrations.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to different degrees to those of the earlier trade marks.

The rest of the contested goods 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.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of Spanish trade mark registration No 2 289 074 due to its reputation as claimed by the opponent and in relation to identical and similar goods and services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of Spanish trade mark registration No 2 289 074 in relation to dissimilar goods and services, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

REPUTATION – ARTICLE 8(5) EUTMR

The Opposition Division will examine the opposition in relation to earlier Spanish trade mark No 2 289 074, for which the opponent claimed repute in Spain.

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 will 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.

Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has 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 11/12/2013. Therefore, the opponent was required to prove that the trade mark 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 services for which the opponent has claimed reputation, namely:

Class 35: Retail sale of diverse food products, drinks, household cleaning products and personal care products.

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 08/01/2015, the opponent submitted the following evidence:

Printouts from its website, http://web.unide.es, providing facts and details about the company UNIDE, in Spanish. These documents were printed on 11/09/2014.

A printout from the website Wikipedia about the UNIDE group, providing facts and details about the UNIDE group of companies, in Spanish. These documents were printed on 11/09/2014.

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

The evidence consists only of some printouts from the opponent’s website and a printout of an entry on Wikipedia about the UNIDE group. There are no market surveys or any other information demonstrating the trade mark awareness or the degree of recognition of the earlier mark by the relevant public. As a result, the evidence does not show that the trade mark is known by a significant part of the relevant public. In the present case, the evidence gives few data and little information about vital factors, such as trade mark awareness, market share and intensity of use. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has 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 mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

In any case, the Opposition Division also notes that the opponent did not provide any facts, arguments or evidence which could support the conclusion that 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 marks.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) 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 only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Sandra

KASPERIŪNAITÉ

Patricia

LÓPEZ FERNÁNDEZ

DE CORRES

Dorothée

SCHLIEPHAKE

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.

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