OPPOSITION No B 2 694 019

Jumel Alimentaria, S.A., Sotaya, 2, 46715 Alqueria de la Comtessa (Valencia), Spain (opponent), represented by Isern Patentes y Marcas, S.L., Avenida Diagonal, 463 bis, 2° piso, 08036 Barcelona, Spain (professional representative)

a g a i n s t

Gaugan Food Technology Stock Co, Block G, No. 1, Zhonglian Road, Putuo District, Shanghai, Putuo Shanghai, People’s Republic of China (applicant), represented by Carolina Margareto, Blasco Ibañez 72, 1C, 28050 Madrid, Spain (professional representative).

On 12/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 694 019 is partially upheld, namely for the following contested goods:

Class 30: Condiments; Sauces [condiments]; Relishes [condiments]. 

2.        European Union trade mark application No 15 026 321 is rejected for all the above goods. It may proceed for the remaining goods and services.

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 15 026 321. The opposition is based on European Union trade mark registration No 4 217 642. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority 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 mark on which the opposition is based.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The date of filing of the contested application is 21/01/2016. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 21/01/2011 to 20/01/2016 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods and services on which the opposition is based, namely the following:

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

Class 30:        Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

Class 39:        Distribution of foodstuffs of all kinds.

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 14/11/2016, according to Rule 22(2) EUTMIR, the Office informed the opponent of the request for proof of use and on 13/01/2017 the time limit to furnish the requested proof of use was extended until 18/03/2017 to submit evidence of use of the earlier trade mark. On 20/03/2017, 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 the following:

• Annex 1: some extracts (undated) from the opponent’s website (www.jumel.com) with information in English about the history of the Spanish company in the production and commercialization of jams and sauces since 1979. The trade mark is present in all the extracts and also in the section referring to the broad range of ‘sauces and dressings’ offered: olive oil, vinegar, vinaigrette, various sauces, salt and pepper, ketchup, mustard and mayonnaise.

• Annex 2: some screen shots of the opponent’s website with the content in Spanish provided by the search engine ‘web archive’ (www.webarchive.org) during different dates (December 2013, December 2014 and January 2016). On December 2014, a photograph shows the trade mark on a panel together with the slogan ‘YOUR EVERYDAY FLAVOUR’, as part of the stand of the company in the international fair SIAL Paris (France).

• Annex 3: a list of results obtained through the search engine ‘Google’ (www.google.com) for the terms ‘JUMEL ALIMENTARIA’ showing around 3,760 results all referring to the opponent. Although the list of results is in Spanish, it can be easily understood that the first reference mentions the trade mark as a word, ‘Jumel’, and the goods, ‘mermeladas y salsas’ are ‘marmalades and sauces’; further, in English it refers to ‘jam’.

• Annex 4: samples of invoices (more than 70) issued by the opponent, corresponding to sales to different clients in Spain, Malta, Czech Republic and Ireland, for the years 2011 to 2016, of food products (marmalade, jam, honey, ketchup, mayonnaise, salt, olive oil and vinegar, mustard and sauces). The invoices show the trade mark  on top and also the description of the goods sold include the reference to ‘JUMEL’.

• Annex 5: a catalogue (undated) in Spanish and English, showing the wide variety of goods (olive oil, vinegar, vinaigrette, salt, salt & pepper, sauces, mustard, ketchup, mayonnaise, marmalade, jams, honey, cocoa cream and syrup) bearing the trade mark  (also depicted in white in some products when the packaging is in colours) and offered in sachets, portions, bottles, buckets and containers; some extracts (dated 2017) from the opponent’s website showing some goods (jams, sauces and dressings) bearing the trade mark and the formats available for each item.

• Annex 6: three pages of internal documents showing turnover of sales of the ‘JUMEL’ goods during the relevant years, 2011 to 2016, in relation to some clients in Spain, Malta and Czech Republic.

• Annex 7: some documents and photos (undated) showing the participation of the opponent along with the trade mark ‘JUMEL’ in an international fair in Paris (SIAL France 2012 and 2016). The trade mark ‘JUMEL’ appears alongside some jams and sauces (mayonnaise and ketchup), honey, salt, oil and vinegar, and vinaigrette.

The numerous invoices show that the place of use is Spain, Malta, Czech Republic and Ireland. This can be inferred from the languages of the documents (English and Spanish), in particular, the invoices, the opponent’s website and the catalogue, the currency mentioned (Euros) and some addresses of clients established in these Member States. Therefore, the evidence relates to the relevant territory.

Even though some of the documents are undated, taking into account the evidence in its entirety and the items of evidence in relation to one and other, it can be concluded that most of the evidence is dated within the relevant period. In particular, the screen shots of the opponent’s website, provided by the search engine ‘web archive’ (Annex 2) during different dates in 2013, 2014 and 2016, show that the website in question (and therefore the extracts submitted in Annex 1) has been available to the public during the relevant period of time. The internal data issued by the opponent regarding the turnover of sales of the ‘JUMEL’ goods during the relevant years, 2011 to 2016, refers to three clients in Spain, Malta and Czech Republic, respectively, and these same clients coincide with those appearing in most of the invoices (a total of 59 invoices).

Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use as well during the relevant period of time. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50).

In the case at hand, the evidence referring to use outside the relevant period confirms use of the opponent’s mark within the relevant period. This is the case of the extracts from the opponent’s website (Annex 5) printed in March 2017 showing some goods (jams, sauces and dressings) bearing the trade mark and the formats available for each product, which coincide with the information provided in other documents dated within the relevant period, namely the invoices (Annex 4) and the extracts from the opponent’s website (Annex 1 in conjunction with Annex 2), and also with the catalogue (Annex 5).

Consequently, the documents filed, namely the numerous invoices, the turnover of sales, the extracts from the opponent’s website and the catalogue, 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 mark has been used as registered, namely as the figurative mark . The catalogue and packaging sometimes show the trade mark depicted in white when the packaging is in colours. Furthermore, the invoices also indicate the trade mark ‘JUMEL’ (word) in the description of the goods sold. However, this does not alter the distinctive character of the earlier mark as 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).

Taking into account the evidence in its entirety, the evidence 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 and services covered by the earlier trade mark.

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.

In the present case, the evidence shows genuine use of the trade mark for the following goods:

Class 29:        Preserved fruits; jams, fruit sauces; edible oils.

Class 30:        Honey; salt, mustard; vinegar, sauces (condiments).

No evidence was filed to show use of the other registered goods. In addition, as regards the opponent’s services in Class 39 (distribution of foodstuff of all kinds), selling or distributing one’s own goods is not a service (Part C, Section 2, Chapter 2, Point 1.4.2 of the Guidelines).

Therefore, the Opposition Division will only consider the abovementioned goods 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.

1. The goods and services

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

Class 29:        Preserved fruits; jams, fruit sauces; edible oils.

Class 30:        Honey; salt, mustard; vinegar, sauces (condiments).

The contested goods and services are, after a restriction requested by the applicant, the following:

Class 29:        Salted meats.

Class 30:        Condiments; Sauces [condiments]; Relishes [condiments].

Class 35:         Demonstration of goods; Advertising and publicity; Import-export agencies; Marketing; Commercial administration of the licensing of the goods and services of others.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 29

‘Salted meat’ is meat preserved or cured with salt. Even though salt is clearly a necessary ingredient, this is not by itself enough to make the contested salted meats similar to the opponent’s salt as they have different purposes, they are normally produced by different undertakings and offered in different departments in stores. Similarly, for the same reasons, the contested salted meats are dissimilar to all the opponent’s remaining goods in Classes 29 and 30.

Contested goods in Class 30

The contested condiments include, as a broader category, the opponent’s sauces (condiments). Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Sauces (condiments) are identically contained in both lists of goods.

A ‘relish’ is a piquant sauce or pickle eaten with plain food to add flavour. Therefore, the contested relishes [condiments] are included in the broad category of the opponent’s sauces (condiments) and they are identical.

Contested services in Class 35

‘Advertising services’ consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by advertising companies, which study their client’s needs, provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, websites, videos, the internet, etc.

‘Demonstration of goods’, ‘publicity’ and ‘marketing’ are examples of advertising services since they are intended to promote others companies’ goods, albeit via different means.

The nature and purpose of advertising services are fundamentally different from the manufacture of goods.

‘Import and export services’ relate to the movement of goods and normally require the involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements. As they are classified in Class 35, they are considered to relate to business administration. These services do not relate to the actual retail or wholesale of the goods; they would be preparatory or ancillary to the commercialisation of such goods. For these reasons, goods are to be considered dissimilar to import and export services for those goods. The fact that the subject matter of the import/export services and the goods in question are the same is not a relevant factor for finding a similarity.

The contested commercial administration of the licensing of the goods and services of others refers to ‘business administration’ services that are intended to help companies with the performance of business operations and, therefore, the interpretation and implementation of the policy set by an organisation’s board of directors. These services consist of organising people and resources efficiently so as to direct activities toward common goals and objectives. They include activities such as personnel recruitment, payroll preparation, drawing up account statements and tax preparation, since they enable a business to perform its business functions and are usually carried out by an entity that is separate from the business in question. They are rendered by inter alia employment agencies, auditors and outsourcing companies.

For the above mentioned reasons, the contested demonstration of goods; advertising and publicity; import-export agencies; marketing; commercial administration of the licensing of the goods and services of others are dissimilar to the opponent’s goods in Classes 29 and 30. This is not only because goods are articles of trade while services consist of the provision of intangible activities, but also because the services and goods in question have different natures, intended purposes and methods of use. Their producers and providers, distribution channels and relevant publics are also different.

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 directed at the public at large. The degree of attention is considered average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

Neither of the signs has a meaning for the public in the relevant territory and are, therefore, distinctive.

Visually, the signs coincide in the string of letters ‘JUME*’, in black bold letters and depicted in a way that the middle letters appear rather smaller in comparison to the first and final letters (a visual effect created by the different lengths of the letters in a way that an imaginary curve could be drawn below the verbal elements of the signs). However, they differ in their final letter, namely the consonants ‘L’ in the earlier mark and ‘X’ in the contested sign, in the font and case of the letters and the orange dot for the letter ‘j’ of the earlier mark.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, the signs are visually highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛JUME*’, present identically in both signs. The pronunciation only differs in the sound of the final letters of the signs, ‛L’ of the earlier mark and ‘X’ of the contested sign.

Since the signs have identical length (five letters) only differing in their final consonants, they have very similar rhythms and intonations and are, therefore, aurally highly similar.

Conceptually, as pointed out above, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

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 as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The contested goods are identical to the opponent’s goods and the contested services are dissimilar to the opponent’s goods. The earlier mark is considered to enjoy a normal distinctiveness.

The signs are visually and aurally highly similar on account of their common string of letters ‘JUME*’ and some aspects of their stylisations, as explained above. The differing letters, ‘L’ in the earlier mark and ‘X’ in the contested sign, are at the end of the signs, where they are less apparent.

The fact that the signs coincide in their beginnings, are identical in length and have very similar rhythms and intonations needs to be taken into account when assessing the likelihood of confusion between the marks.

As neither of the signs has any meaning for the relevant public, the conceptual aspect will not contribute to the ability of consumers to distinguish the signs from one and other.

Even though the signs also differ in the fonts of the letters and the orange dot in the earlier mark, it should be mentioned that the relevant consumer will usually refer to signs made up of word elements and figurative elements by their word element, and not by describing their stylisation. Therefore, the visual and aural differences between the signs are mainly confined to their final letters, ‘L’ and ‘X’.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The goods themselves are fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (15/04/2010, T-488/07, Egléfruit, EU:T:2010:145).

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

It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.

COSTS

According to Article 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

Ric WASLEY

Marta GARCÍA COLLADO

Richard BIANCHI

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.