OPPOSITION No B 2 722 158

Aldi Einkauf GmbH & Co. oHG, Eckenbergstr. 16 A, 45307 Essen, Germany (opponent), represented by Schmidt, von der Osten & Huber Rechtsanwälte Steuerberater Partnerschaft mbB, Haumannplatz 28, 45130 Essen, Germany (professional representative)

a g a i n s t

ZPC Flis Spółka Jawna, Kuranów 12, 96-325 Radziejowice, Poland (applicant), represented by Kancelaria Patentowa "Property" Tomaszewska i Syn, ul. E. Kwiatkowskiego 1 lokal 12, 03-984 Warszawa, Poland (professional representative).

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

DECISION:

1.        Opposition No 2 722 158 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 030 786 . The opposition is based on two earlier German trade marks: No 30 702 839 and No 30 702 840 . The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION of earlier German trade mark No 30 702 840

According to Article 76(1) EUTMR, in proceedings before it, the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the present case, the notice of opposition was accompanied by the evidence required and the corresponding translations.

Both earlier marks, on which the opposition is based, were originally due to expire on 31/01/2017.

On 08/12/2016, after the substantiation period, the opponent on its own motion submitted a certificate from the German Patent and Trademark Office of the renewal of trade mark No 30 702 839 but did not submit its correct translation. Regarding German trade mark No 30 702 840, the opponent submitted a translation but not an original Certificate of the renewal.

On 04/07/2017, the Office invited the opponent to submit a certificate of the renewal of the earlier marks.

On 11/07/2017, the opponent submitted a confirmation letter and translation for German trade mark registration No 30 702 839. As far as German trade mark registration No 30 702 840 is concerned, the opponent did not submit the original of certificate of the renewal, only the translation of the letter confirming renewal.

According to Rule 19(4) EUTMIR, the Office shall not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

It follows that the evidence filed by the opponent to substantiate the earlier German trade mark No 30 702 840 is not sufficient and the opposition must therefore be rejected as unfounded, insofar as it is based on this earlier right.

The examination of the opposition will proceed on the basis of earlier German trade mark registration No 30 702 839.

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.

1. The goods and services

Even though the notice of opposition included other goods purportedly protected by the earlier mark, the goods for which the earlier mark is registered are those proven by the German certificate submitted on 27/06/2017 (and its extension on 11/07/2017) and it will be on those goods on which the opposition will be based, namely the following:

Class 30:        Coffee; coffee-based products and beverages with proportion of coffee; cocoa-based beverages powder.

The contested goods and services are the following:

Class 30:         Confectionery, sweetmeats [candy], wafer biscuits, wafer rolls, pastries.

Class 35:        Retailing or wholesaling of confectionery, cookie molds, edible wafers and rolled wafers, wholesaling and retailing of confectionery, cookie molds, edible wafers and rolled wafers via the internet.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 30

When comparing the contested goods confectionery, sweetmeats [candy], wafer biscuits, wafer rolls, pastries, which are all kinds of confectionery and bakery products, with the opponent’s coffee based beverages, these are dissimilar. Contrary to the opponent’s assertions, even though they are foodstuffs, their nature and purpose are different, as the opponent’s goods are for drinking versus products to eat. The fact that the opponent’s goods could be consumed together with the contested pastry and confectionery is immaterial for establishing similarity between these goods. The goods are not complementary (since one is not indispensable or important for the use of the other) nor are they in competition. Contrary to the opponent´s argument, the fact that, for example, in some coffee shops, the opponent´s goods, for example coffee are often served (and consumed) alongside the products of the contested mark is not enough to establish similarity between these goods. It is true, that these goods may be sold through the same distribution channels to the public at large but they are generally displayed in different areas or on different shelves in grocers, supermarkets and department stores, and the producers are not usually the same, though there might be some very few exceptions on the market as noted by the opponent in their submissions entitled Annex 1.

Regarding the opponent´s argument related to the complementarity between the conflicting goods, it is necessary to point out that complementarity has to be clearly distinguished from use in combination where goods/services are merely used together, whether by choice or convenience (e.g. candies filled with coffee as shown by the opponent in their submissions entitled Annexes 2, 3 and 4). This means that they are not essential for each other (16/12/2013, R 634/2013-4, ST LAB (fig.) / ST, § 20). In such cases similarity can only be found on the basis of other factors, but not on complementarity. In the case at hand, the mere fact that the relevant goods may be used in combination with each other does not make them complementary.

Contested services in Class 35

Comparison of the contested services in Class 35, namely retailing or wholesaling of confectionery, cookie molds, edible wafers and rolled wafers, wholesaling and retailing of confectionery, cookie molds, edible wafers and rolled wafers via the internet, with the opponent’s goods in Class 30 also finds them to be dissimilar. The goods and services are different by nature, as goods are fundamentally different from services; the former are tangible whilst the latter are intangible. The goods and services serve clearly different purposes, they are usually directed at different consumer circles and they do not originate from the same undertakings. Furthermore, they are neither complementary nor in competition. As correctly pointed out by the opponent in its observations, similarity between retail services of specific goods covered by one mark and specific goods covered by the other mark is possible as it has been confirmed by the Court of Justice. However, this similarity can only be found where the retailed goods and the specific goods covered by the other mark are identical and this condition is not fulfilled in the present case since the goods at issue are dissimilar. In view of the above, the contested services and the opponent’s goods in Class 30 are considered dissimilar.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

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

The Opposition Division

Martin MITURA

Ric WASLEY

Vanessa PAGE

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.