OPPOSITION No B 2 642 844

Marana Forni S.r.l., Via Turbina, 98, Verona (VR), Italy (opponent), represented by Mondial Marchi S.r.l., Via Olindo Malagodi, 1, 44042 Cento (FE), Italy (professional representative)

a g a i n s t

Euro Restaurant Solutions, Inc., 10310 Southard Drive, Beltsville Maryland 20705, United States of America (applicant), represented by Bromhead Johnson, Sovereign House, 212-224 Shaftesbury Avenue, London WC2H 8HQ, United Kingdom (professional representative).

On 04/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 642 844 is upheld for all the contested goods.

2.        European Union trade mark application No 14 557 532 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 557 532. The opposition is based on European Union trade mark registrations No 8 188 302 and No 10 056 208, and Italian trade mark registration No 1 470 573. The opponent invoked Article 8(1)(b) EUTMR.

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 European Union trade mark registration No 8 188 302 ‘MARANAFORNI’ (word mark). As this earlier right is the most similar trade mark to the contested sign, it is necessary to examine whether the evidence submitted by the opponent is sufficient for demonstrating its genuine use.

The request for proof of use was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 22/10/2015. The opponent was, therefore, required to prove that the trade mark on which the opposition is, inter alia, based was put to genuine use in the European Union from 22/10/2010 to 21/10/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods and services on which the opposition is based. After the opponent’s declaration pursuant to Article 28(8) EUTMR as recorded by the Office on 01/06/2016, the goods and services on which the opposition is based are the following:

Class 11:        Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; Friction lighters for igniting gas; Gas lighters; Igniters; Regulating and safety accessories for gas apparatus; Regulating and safety accessories for gas pipes; Chromatography apparatus for industrial purposes; Tanning apparatus [sun beds]; Gas cleaners and purifiers; Oil-scrubbing apparatus; Flare stacks for use in oil refineries; Gas condensers, other than parts of machines; Gas scrubbers [parts of gas installations]; Fuel economisers; Acetylene generators; Gas generators (installations); Polymerisation installations; Processing installations for fuel and nuclear moderating material; Ultraviolet ray lamps, not for medical purposes; Nuclear reactors; Refining towers for distillation; Level controlling valves in tanks.

Class 37:        Building construction; Repair; Installation services; Mining extraction; Quarrying services.

However, at this point the Opposition Division finds it appropriate to limit the assessment of the evidence to the goods that are the most relevant to support the opponent’s claims, namely:

Class 11:        Apparatus for cooking.  

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 04/10/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 09/12/2016 to submit evidence of use of the earlier trade mark. On 30/11/2016, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is, in particular, the following:

Enclosure 1:        A selection of invoices, issued from 17/09/2010 to 11/09/2015, addressed to different customers based in France, Austria, Germany, Spain, Slovenia, Italy, Belgium, Portugal, the United Kingdom, Romania, Croatia, Malta and some other countries of the EU. The transactions mainly refer to ovens (gas ovens, rotating ovens, wood ovens etc.) and spare parts thereof (e.g. burners, grids, door locks etc.), sold in low quantities per invoice. The invoices display the sign in various representations, for example:

         

Enclosure 2:        A selection of commercial offers of ovens and spare parts thereof, dated from 2010 to 2015, addressed to various customers in several EU countries. The sign is displayed for example as:

  

Enclosure 6:        Product catalogues, dated 2012 and 2013, in Italian, English, Spanish, German and Polish, providing technical specifications and promotional information in relation to a range of pizza and food ovens. The photos of the ovens show that they bear the sign ‘MaranaFORNI’, for example as .

Assessment of the evidence

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 for which the earlier mark is registered and which are relevant for the present opposition.

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 show that the place of use is a number of Member States of the EU. This can be inferred from the town and country names indicated on the invoices. Therefore, the evidence relates to the relevant territory.

As regards the time of use, most 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 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 invoices, the commercial offers and the product catalogues do provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. The evidence shows that the goods bearing the sign at issue were sold to various customers based in a number of locations across a significant part of the relevant territory. Promotional material was made available to the public in several languages of the EU. Although the invoices indicate a low commercial volume per transaction and the information concerning the product prices has been redacted for confidentiality purposes, there are more than ten invoices submitted in relation to each year in the relevant period, thus demonstrating sufficient frequency and duration of use. Therefore, the Opposition Division considers that the opponent has provided ample indications concerning the extent of the use of the earlier mark.

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

The product catalogues show that the earlier mark was used in such a way as to establish a clear link between the goods and the undertaking responsible for their marketing. Moreover, the use was public and outward. In view of the above, the Opposition Division considers that the evidence shows use of the sign as a trade mark.

According to Article 15(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 which 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 42(2) and (3) EUTMR, Article 15 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, it is recalled that the earlier mark is registered as a word mark, ‘MARANAFORNI’.

The images of the goods included in the product catalogues show that the sign is directly affixed to the goods in a slightly stylised representation (as shown above under Enclosure 6). The stylisation plays only a minor role, being merely decorative, thus the distinctive character of the sign as registered is not affected.

Concerning the actual manner of use as shown in the rest of the evidence, it is noted that the depictions of the sign feature some additional elements, both verbal and figurative (as shown above under Enclosures 1-2). Specifically, the word ‘MARANA’ is graphically separated from the word ‘FORNI’ by means of different colours, typefaces or by depicting these words on two lines. In addition, the depictions include a yellow swirly background image, a ribbon with the colours of the Italian flag, the words ‘MADE IN ITALY’, ‘VERONA’, the opponent’s website address and email address etc. None of those elements play a significant role as they are purely decorative, promotional or non-distinctive otherwise. Moreover, they are depicted in subordinate positions and small sizes. Therefore, the addition of the secondary elements constitutes an acceptable variation of the earlier mark’s registered form and does not alter its distinctive character.

 

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

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).

Taking into account the evidence listed above, the proof submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods on which the present assessment is focused.

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 will, 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.

According to case-law, when applying the abovementioned provision the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.

(14/07/2005, T-126/03, Aladin, EU:T:2005:288).

In the present case, the evidence proves use only for pizza and food ovens. These goods can be considered to form an objective subcategory of apparatus for cooking, namely ovens. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for ovens.

For the sake of completeness, the Opposition Division notes that the rest of the evidence submitted by the opponent that is not listed hereinabove does not contain sufficient indications of use in relation to any other goods, aside from pizza and food ovens. Therefore, at this point it is unnecessary to proceed to a further assessment of the evidence.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 8 188 302.

1. The goods

In view of the conclusion drawn from the assessment of proof of use that has been limited to only some of the goods and services on which the opposition is based, the goods that have to be taken into account for the comparison are the following:

Class 11:        Ovens.

The contested goods are the following:

Class 11:        Pizza ovens.

The contested pizza ovens are included in the broader category of the opponent’s ovens. Therefore, they are identical.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical are ovens, including those specifically designed for the preparation of pizza. They are used both in households (as kitchen equipment or for use outdoors) and restaurants, pizza parlours, cafeterias or any given establishment providing food. Therefore, it is considered that the goods in question are directed at the public at large and at business customers with specific professional knowledge or expertise in the food and catering industries.

The public’s degree of attentiveness may vary from average to high, depending on the price and sophistication of the purchased goods.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

3. The signs

MARANAFORNI	MARRA FORNI
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The word ‘FORNI’ is meaningful in Italian. Given that it is the plural form of the word ‘forno’ meaning ‘oven’, that element is directly descriptive and non-distinctive in relation to the goods at issue. The applicant claims that the meaning of ‘FORNI’ will be understood throughout the relevant territory and submits a list of EU trade marks that contain the letter string ‘forni’ for goods in Class 11, and an extract from a search conducted on the internet for the phrase ‘pizza forni’. The Opposition Division finds, however, that outside Italy there is a part of the public—which is not a negligible one—who is not generally familiar with Italian. It has to be pointed out that the word in question is not commonly used in trade or marketing, as would be the case with the term ‘pizza’ for instance. Therefore, the non-Italian-speaking part of the general public in the European Union cannot be expected to know the meaning of this term.  

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-Italian-speaking part of the public, such as the public in the Germanic, Slavic and Baltic language areas.

For the relevant public, the single word ‘MARANAFORNI’ of the earlier mark, as well as the two words comprising the contested sign, ‘MARRA FORNI’, are fanciful and distinctive to an average degree.

It follows that, conceptually, neither of the signs has a meaning for the relevant public. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

Visually, the signs coincide in the letters ‘MAR*A*FORNI’. However, they differ insofar as the earlier mark contains the letters ‘AN’ in the middle of the shared letter sequence, whereas the contested sign contains an additional letter ‘R’. The signs also differ in that the contested sign is depicted as two words, whilst the earlier mark consists of a single word.

Since the signs have nine letters in common and they appear in the same sequence, the signs are visually similar to at least an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant language areas, the pronunciations of the signs coincide in the sound of the letters ‘MAR(R)A*FORNI’, because the double ‘R’ in the contested sign as opposed to the single ‘R’ in the earlier mark is not likely to result in an audible difference. Thus, the pronunciations of the signs differ essentially in the additional syllable ‘AN’ in the middle of the earlier mark.

Therefore, the signs are highly similar.

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

4. 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 has no meaning for the goods in question from the perspective of the public in the relevant language areas. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

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). The interdependence principle is crucial the global assessment particularly as, in the present case, the contested goods are identical to those of the opponent.

Admittedly, the signs show some differences. Nevertheless, they are not enough to dispel at least an average degree of similarity on a visual level, and a high degree of similarity from an aural perspective. Thus, the differences identified between the conflicting signs are incapable of removing the overall impressions given by them sufficiently far apart to enable the relevant public to safely distinguish between them.

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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

Considering all the above, and based on the average degree of inherent distinctiveness of the earlier mark, there is a likelihood of confusion on the part of the general public in the non-Italian-speaking language areas in the relevant territory. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. It follows that there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 8 188 302. Consequently, the contested trade mark must be rejected for all the contested goods.

As earlier European Union trade mark registration No 8 188 302 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268). Likewise, it is unnecessary to proceed to a further assessment of the evidence of use submitted by the opponent.

As a final remark, the Opposition Division notes that, in its observations of 27/01/2017, the applicant argued that the conflicting signs had been present at the same exhibition without any confusion having arisen on the part of the public, and submitted evidence to support this claim (a declaration of the Chief Executive Officer of the applicant’s company along with an event report from the trade show ‘International Pizza Expo 2016’ that took place in the U.S.A., the applicant’s product catalogue, and some other material).

According to case-law, the possibility cannot be entirely dismissed that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the Opposition Division and the Board of Appeal find exists between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds of refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard, it should also be proven that the marks coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market on a national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion. This has to be assessed on a case-by-case basis and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

In view of the foregoing, the abovementioned documents submitted by the applicant do not amount to convincing evidence that could support the conclusion of ‘peaceful’ coexistence on the market. Under these circumstances, the applicant’s claims must be set aside.

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

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

The Opposition Division

Edith Elisabeth VAN DEN EEDE

Solveiga BIEZA

Julie GOUTARD

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.