OPPOSITION No B 2 520 958

Savencia SA, 42 rue Rieussec, 78220 Viroflay, France (opponent), represented by Lynde & Associés, 5, rue Murillo, 75008 Paris, France (professional representative)

a g a i n s t

A2F2, Via Villar Focchiardo 5, 10138 Torino, Italy (applicant), represented by Notarbartolo & Gervasi, Via Luigi Mercantini 5, 10121 Torino, Italy (professional representative).

On 24/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 520 958 is partially upheld, namely for the following contested goods:

Class 29:        Drinking yogurts; milk drinks containing fruits.

2.        European Union trade mark application No 13 611 975 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 some of the goods and services of European Union trade mark application No 13 611 975, namely against some of the goods and services in Classes 29, 30 and 43. The opposition is based on, inter alia, European Union trade mark registration No 223 990. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARKS

In reply to the applicant’s argument regarding professional representation of the opponent it must be noted, firstly, that a natural or legal person may appoint various representatives in various proceedings before the Office. Secondly, according to the practice of the Office, submission of a signed opposition form by a professional representative is considered to be an explicit appointment of a representative for the initiated procedure (EUIPO Guidelines, Part A General Rules, Section 5 Professional Representation, point 3.4 Appointment/Replacement of a representative, 3.4.1 Explicit appointment/replacement).

The opposition is based on more than one earlier trade mark. For reasons of procedural economy, the Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 223 990.

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 No 223 990 ‘FOL’EPI’.

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

The contested application was published on 04/02/2015. 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 04/02/2010 to 03/02/2015 inclusive.

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

Class 30:        Cheese.

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 12/02/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 12/04/2016 to submit evidence of use of the earlier trade mark. This time limit was extended until 12/06/2016. On 10/06/2016, 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 the following:

• 19 photocopies of invoices dated between 19/05/2011 and 02/02/2015, issued by the opponent’s French subsidiary ‘Les Fromagers Associés’ to various entities in France, for goods including those under the trade mark ‘FOL EPI’. It is clear from the quantities sold (units or weight) that this is wholesale.
• 60 photocopies of invoices dated between 21/01/2010 and 04/02/2015, issued by the opponent’s Spanish subsidiary ‘Mantequillas ARIAS’ to various entities in Spain, for goods including those under the trade mark ‘Fol epi’. It is clear from the quantities sold (units or weight) that this is wholesale.
• 10 photocopies of invoices dated between 19/04/2011 and 26/01/2015, issued by the opponent’s French subsidiary ‘Les Fromagers Associés’ to the Spanish subsidiary ‘Mantequillas ARIAS’, for goods including those under the trade mark ‘FOL EPI’. It is clear from the quantities sold (units or weight) that this is wholesale.
• 9 photocopies of invoices dated between 18/03/2011 and 12/01/2015, issued by the opponent’s French subsidiary ‘Les Fromagers Associés’ to the German subsidiary ‘Bongrain Deutschland GmbH’, later ‘Savencia F&D Deutschland GmbH’, for goods including those under the trade mark ‘FOL EPI’. It is clear from the quantities sold (units or weight) that this is wholesale.
• 10 photocopies of invoices dated between 04/02/2011 and 02/02/2015, issued by the French subsidiary ‘Les Fromagers Associés’ to the Italian subsidiary ‘Bongrain Italia SPA’, later ‘Savencia Fromage&Diary Italia’, for goods including those under the trade mark ‘FOL EPI’. It is clear from the quantities sold (units or weight) that this is wholesale.
• One photocopy of an invoice dated 02/02/2015, issued by the French subsidiary ‘Les Fromagers Associés’ to the Austrian subsidiary ‘Bongrain Autriche GmbH’, for goods including those under the trade mark ‘FOL EPI’. It is clear from the quantities sold (units or weight) that this is wholesale.
• 8 photocopies of pages from Spanish grocery flyers, dated between 20/06/2013 and 10/01/2016, on which a cheese bearing the mark ‘FOL EPI’ is displayed.
• 4 photocopies of pages from Italian grocery flyers, dated between 03/11/2010 and 15/06/2015, on which a cheese bearing the mark ‘FOL EPI’ is displayed.
• 15 photocopies of pages from German grocery flyers, dated between 2010 and 2015, on which a cheese bearing the mark ‘Fol Epi’ is displayed.
• 7 pages of summary of advertising campaigns, in German, from years 2010 – 2015, where a cheese bearing the mark ‘Fol Epi’ is displayed.
• 53 photocopies of invoices dated within the period 13/04/2011 – 08/06/2015, issued by various German marketing companies to the opponent’s German subsidiary ‘Bongrain Deutschland GmbH’ for various types of advertising of ‘Fol Epi’ products.
• 5 photocopies of invoices dated within the period 09/02/2011 – 31/03/2011, issued by various French marketing companies to the opponent’s French subsidiary ‘fromageries perreault’ for marketing costs of ‘Fol Epi’ products, re-billed on 27/04/2011 to the opponent’s German subsidiary ‘Bongrain Deutschland GmbH’.
• 10 invoices and correction invoices (Rechnungskorrektur) dated within the period 14/01/2013-13/11/2015 issued by the German media agency ‘Viseum’ for publishing ‘Fol Epi’ advertisements in various German magazines (‘Essen&Trinken’, ‘Freundin’, ‘Lecker’, ‘Lust auf Genuss’, ‘meine Familie & ich’) and broadcasting of ‘Fol Epi’ advertisement in various German TV channels (Disney Channel, Kabel 1, N24, N-tv, RTL, RTL II, Sat.1, Sat. 1 Gold, Sixx, Tele 5, ProSieben).
• Datasheets originating from the opponent with tables summarising volume of sales (in tonnes) of ‘FOL EPI’ trademark in European countries in years 2009 – 2015.
• Photocopies of the opponent’s ‘Annual report 2014’, in French, where on page 21 ‘FOL EPI’ cheese in slices is mentioned as a product rewarded for its packaging ‘Fol Epi DUO’ in Germany and with good references in Austria and Switzerland.
• Photocopy of one page of marketing survey, in French, without any clear indication as to its origin, which reports on the knowledge of various types of cheese. According to this document, ‘Fol Epi’ products are known by 46-55 interrogated persons over 35 years old, in years 2011-2016. It is not clear if this number refers to the percentage of population or to number of interrogated persons. The territory of the survey is not mentioned neither.
• 3 printouts of websites, dated 03/06/2016, in English and Italian, with photos of cheese bearing the mark ‘Fol Epi’.
• 7 pages of photos with examples of packaging of various types of ‘Fol Epi’ cheese, in German and French.
• Printouts of websites ‘Qui veut du Fromage’ in French and ‘Ich-liebe-kaese.de’ in German, dated 03/06/206, with photos of cheese bearing the mark ‘Fol Epi’.
• One CD with video spots in German advertising ‘Fol Epi’ cheese dated 2005, 2014 and 2015.
• Screenshots of webpages with video advertisement of ‘FOL EPI’ products, in French, dated 15/08/1994 and 15/11/1996, as well as Google search result with a list of various ‘Fol Epi’ video advertisement, in French.

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 fully translated and are considered relevant for the present proceedings, namely, invoices and grocery flyers 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 for which the earlier mark is 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 documents show that the place of use is the European Union. This can be inferred from the language of the documents (French, German, Italian, Spanish), the currency mentioned (‘EUR’) and some addresses in France, Germany, Italy and Spain. Therefore, the evidence relates to the relevant territory.

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 because, part of this evidence supplements other evidence dated within the relevant period and part of this evidence is dated very close in time to the relevant period.

The documents filed, namely the invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

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, although the evidence of use shows use of the sign in the forms ‘FOL EPI’ and , which are slightly different from the registered form, ‘FOL'EPI’, it must be noted that this does not constitute an unacceptable variation of use, since the differing elements (missing apostrophe between the verbal elements ‘FOL’ and ‘EPI’ as well as addition of colour and simple stylisation of characters) do not alter the distinctive character of the earlier trade mark in the form in which it was registered.

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 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 for the relevant goods.

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 and for which use is proved are the following:

Class 29:        Cheese.

The contested goods and services, after the limitation submitted by the applicant on 15/07/2015, are the following:

Class 29:        Drinking yogurts; milk drinks containing fruits.

Class 30:        Ice cream drinks; ice cream desserts; yoghurt (frozen-) [confectionery ices].

Class 43:        Restaurants; bar services; cafés; bistro services; cafeterias; catering; wine tasting services (provision of beverages); cookery advice; provision of food and drink, except cheeses and dairy products; take-out restaurant services; fast food restaurant services; self-service restaurants; bar services; personal chef services; ice cream parlour services; fast food restaurant services. 

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

The contested drinking yogurts; milk drinks containing fruits are similar to the opponent’s cheese. They are products derived directly from milk, the only difference being that they are the result of a different way of processing this raw material. Drinking yogurts is a liquid dairy product produced by the bacterial fermentation of milk whereas cheese consists of a solid diary product prepared from the pressed curd of milk. In order to keep these dairy products fresh as long as possible, they are found at the same points of sale in the refrigerated dairy section of supermarkets and stores where they target the same public. Since they are all made from milk and have similar production methods, they are also often produced by the same manufacturers. In conclusion, they have the same nature, can be produced by the same providers, use the same distribution channels and target the same public.

Contested goods in Class 30

The contested ice cream drinks; ice cream desserts; yoghurt (frozen-) [confectionery ices] are various frozen/cooled confectionery products usually based on milk.

The contested ice cream drinks; ice cream desserts; yoghurt (frozen-) [confectionery ices] are dissimilar to the opponent’s cheese in Class 29, since they have different nature and purpose. They normally do not coincide in their origin or sales outlets and are not complementary. Although the opponent provided two examples of products such as cheese and ice creams/frozen yoghurts sold under the same trade mark (Philadelphia and DANONE) this is not a rule on the market but rather an exception concerning multinational corporations, which produce very broad ranges of products.

The facts that the goods in question may target the public at large and be in competition, as they may both be consumed as a dessert course, is not sufficient for finding similarity between them.

Contested services in Class 43

The contested services in Class 43 comprise various services of the provision of food and drink as well as cookery advice. The fact that cheese may be one of the foodstuffs used for the provision of the contested services and cookery advice might be sponsored by cheese producer, is not sufficient for finding similarity. The contested services are considered dissimilar to the opponent’s cheese in Class 29, because their nature, purpose and usual origin are different. They are neither in competition nor complementary in the sense that one is necessary or very important for the provision of the other (13/04/2011, T-345/09, Puerta de Labastida, EU:T:2011:173, § 51)..

Moreover, although there are many restaurants that are specialised in cheese dishes, such as ‘raclette’ or ‘fondue’, and many restaurants that offer cheese on their menu, this does not lead customers to believe that a particular restaurant is responsible for the production of this wide selection of cheese, as this is a very unusual situation on the market and concerns only highly successful food providers, such as the ones mentioned by the opponent.

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 similar are directed at the public at large.

The degree of attention will be average.

3. The signs

FOL'EPI
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 verbal elements of the signs are not meaningful in certain territories, for example, for the English-, German-, Spanish- and Polish-speaking public. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public such as English-, German-, Spanish- and Polish-speaking public.

The contested sign is a figurative mark comprising a verbal element ‘FOL’ in orange standard characters with white borders and a figurative element in the form of an orange jester’s hat placed over the letter ‘O’. The verbal element ‘FOL’ is clearly the dominant element of the contested sign, as it overshadows the figurative element by virtue of its central position and size.

The earlier mark is a word mark, ‘FOL’EPI’, and therefore has no elements that could be considered more dominant (visually eye-catching) than other elements.

None of the verbal elements of the signs has any meaning for the public under analysis and all are therefore normally distinctive in relation to the relevant goods.

The figurative element of the contested sign, due to its position and the size, will be perceived rather as a decorative element over the letter ‘O’ and its distinctiveness is therefore limited.

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).

It must be emphasised that 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.

Visually, the signs coincide in that the entire verbal element of the contested sign, namely ‘FOL’, is included in the earlier mark, moreover as its initial part. However, they differ in the additional verbal element of the earlier mark ‘EPI’ and an apostrophe, which have no counterparts in the contested sign. The signs differ also in the figurative elements of the contested sign, which has no counterpart in the earlier mark. These elements have nevertheless limited impact on the perception on the sign, as explained above.

Therefore, the signs are visually similar to an average degree.

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 ‘FOL’, present identically in both signs. The pronunciation differs in the sound of the letters ‛EPI’ of the earlier mark, which have no counterparts in the contested sign.

Therefore, the signs are aurally similar to an average degree.

Conceptually, 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.

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.

According to the opponent, the earlier mark 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’).

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 and services are partly similar and partly dissimilar to the opponent’s goods. The signs are visually and aurally similar to an average degree and the conceptual aspect does not influence the assessment of the similarity of the signs. The degree of attention of the relevant public is average. The distinctive character of the earlier mark is normal.

Account must be 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).

Moreover, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

The verbal element of the contested sign, ‘FOL’, is fully included in the earlier trade mark, moreover as its first element, followed by an apostrophe and another verbal element ‘EPI’. It is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-, German-, Spanish- and Polish-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. 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 from the above that the contested trade mark must be rejected for the goods found to be similar 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.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use/reputation as claimed by the opponent and in relation to similar goods. 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 the opposing mark 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.

The opponent has also based its opposition on the following earlier trade marks:

1. French trade mark ‘FOL’EPI’ No 1 541 435.

2. International registration No 848 338 designating Germany, Italy and Spain.

Since the opposition is based on the same scope of goods in relation to these earlier marks (cheese), the outcome would be no better for the opponent in relation to the dissimilar goods and services, even had the other earlier right, subject to proof of use, been examined.

Therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

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 both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Adriana Pieternella VAN ROODEN

Anna ZIÓŁKOWSKA

Frédérique SULPICE

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.