OPPOSITION No B 2 336 900

Aldi GmbH & Co. KG, Burgstr. 37, 45476 Mülheim/Ruhr, 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

ALLMI Limited, Unit 7b, Prince Maurice House, Cavalier Court, Bumpers Farm, Chippenham, Wiltshire SN14 6 LH, United Kingdom (applicant), represented by Roome Associates Limited, Basepoint Business Centre, Bromsgrove Technology Park, Isidore Road, Bromsgrove, Worcestershire B60 3ET, United Kingdom (professional representative)

On 30/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 336 900 is partially upheld, namely for the following contested goods and services:

Class 9:        Electronic publications; teaching apparatus; CD ROMs; DVDs; protective clothing.

Class 16:        Printed matter; publications; magazines, books, journals, manuals; instructional and teaching materials (except apparatus); decalcomanias; diaries; posters, photographs.

Class 25:        Clothing, footwear, headgear.

Class 35:        Advertising and promotional services.

Class 41:         Education and training services; setting of training standards; provision of skill assessment courses; operating lorry loader training programmes; certification of education and training awards; organisation of forums relating to the lorry loader industry.

Class 42:        Provision of scientific and technological information.

Class 45:        Consultancy services relating to health and safety; information services relating to health and safety; setting of standards for the lorry loader industry; instructor accreditation services; legal information services; political lobbying services; advisory services relating to the regulations applying to the design, manufacture, application and use of lorry loader cranes; legal advisory, negotiating and representational services, all provided by an association for its members relating to the lorry loader industry.

2.        European Union trade mark application No 12 210 738 is rejected for all the above goods and services. It may proceed for the remaining services, namely:

Class 42:        Advisory services relating to the design and manufacture of lorry loader cranes; certification 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 12 210 738 for the word mark ‘ALLMI’. The opposition is based on 1) European Union trade mark registration No 10 609 287, 2) European Union trade mark registration No 2 071 728, 3) European Union trade mark registration No 2 714 459, 4) European Union trade mark registration No 3 360 914, 5) international registration designating the European Union No 870 876, 6) European Union trade mark registration No 6 870 943, all for the word mark ‘ALDI’, as well as 7) European Union trade mark registration No 11 181 815 for the word mark ‘ALDI TALK’ and 8) European Union trade mark registration No 11 181 823 for the word mark ‘ALDI MOBILE’. 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.

For international registrations designating the European Union, the ‘date of publication’ of the contested mark within the meaning of Article 42(2) EUTMR, that is to say for the purposes of establishing the five-year period of use obligation for the earlier mark, is considered to be six months after the first republication of the international registration, which corresponds to the beginning of the opposition period (Article 156 EUTMR in conjunction with Article 152 EUTMR, in the version in force at the time of filing of the opposition). The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The applicant requested that the opponent submit proof of use of some of the trade marks on which the opposition is based, namely of earlier marks 2) European Union trade mark registration No 2 071 728, 3) European Union trade mark registration No 2 714 459 and 5) international registration designating the European Union No 870 876.

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

The contested application was published on 07/01/2014. The opponent was therefore required to prove that the three earlier marks concerned were put to genuine use in the European Union from 07/01/2009 to 06/01/2014 inclusive.

Furthermore, the evidence must show use of the trade marks for the goods and services on which the opposition is based. European Union trade mark registration No 2 071 728 covers goods and services in Classes 3, 4, 7, 9, 16, 24, 25, 29, 30, 31, 32, 33, 34 and 36, European Union trade mark registration No 2 714 459 covers services in Classes 35 and 36 and international registration designating the European Union No 870 876 covers services in Classes 35, 38, 40, 41 and 42.

For reasons of procedural economy, the Opposition Division finds it appropriate to first examine the proof of use concerning international registration designating the European Union No 870 876 (earlier mark 5). In the case of this earlier mark, it is based on the following services:

Class 35: Advertising; business management; business administration; office functions; retailing in all product areas; online retailing in all product areas; operating supermarkets, retail outlets and discount retail outlets; advertising in the Internet, for others; providing information on the Internet, namely information about consumer products, consumer advice information and customer service information; arranging of commercial transactions for third parties, also on the Internet; arranging of contracts regarding the purchase and sale of goods, as well as the providing of services for others, also via the Internet.

Class 38: Telecommunications.

Class 40: Treatment of materials; photographic laboratory services; making of photographic copies, also on the basis of digital data, development of films, duplicating of photographs; photograph processing services, in particular enlargement and retouching of digital photographs.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; providing of entertainment in the form of recorded music, recorded images and films.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; legal services; provision of storage space on the Internet; services of a database, namely collecting, saving, updating, forwarding and making available all kinds of data for third parties; operating and providing portals on the Internet; holding in readiness for electronic retrieval by third parties as well as electronic transmission of sound, images as well as other data and information of all kinds, in each case in particular via the Internet.

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 06/09/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 11/11/2016 to submit evidence of use of the earlier trade marks. Upon a request filed by the opponent, this deadline was extended until 11/01/2017. On 12/10/2016, 03/01/2017 and 09/01/2017, within the time limit, the opponent submitted evidence of use. The opponent indicates that the evidence filed on 12/10/2016 was intended to prove use of the earlier mark ‘ALDI’ for services in Class 35, the evidence filed on 03/01/2017 to prove use of the mark for services in Class 41 and the evidence filed on 09/01/2017 to prove use of the mark ‘ALDI’ for goods in Classes 16 and 25 (as covered by European Union trade mark registration No 2 071 728).

As regards the goods in Classes 16 and 25 (of earlier mark 2) for which evidence of use was filed on 09/01/2017, the Opposition Division finds it appropriate to first assess the likelihood of confusion based on other earlier rights invoked (and not subject to proof of use) and will therefore not proceed to undertake a full analysis of the evidence filed by the opponent to prove use of the earlier mark ‘ALDI’ for goods in Classes 16 and 25.

Likewise, as regards the services in Class 35 for which evidence of use was filed on 12/10/2016, the Opposition Division notes that the opposition is based on other earlier marks which are not subject to the use requirement and which cover services in Class 35. For reasons of procedural economy, the Opposition Division finds it appropriate to first assess the likelihood of confusion based on the other earlier rights invoked covering services in this class and will therefore not proceed to undertake a full analysis of the evidence filed by the opponent to prove use of the earlier mark ‘ALDI’ for services in Class 35.

Nevertheless, it remains relevant to assess whether the evidence submitted to prove use of international registration designating the European Union No 870 876 is sufficient to establish use of this mark for the remaining services covered in Classes 38, 40, 41 and 42.

In this respect, the evidence to be taken into account is the following:

• Item B0: an affidavit dated 23/12/2016 and signed by the Corporate Group Director HR of ALDI SÜD Dienstleistungs-GmbH & Co. oHG stating that ALDI SÜD is operating its supermarkets and other services under the following sign:

It also states that since 2012, ALDI SÜD has been in cooperation with several universities in Germany in relation to the provision of educational services in the form of dual bachelor programmes and master programmes, that currently 295 students are studying the dual study programmes at 16 partner universities and that a lecture hall called ‘Lecture Hall ALDI SOUTH’ was inaugurated in 2016 at the University of Reutlingen. These statements are supported by documents attached as Item B1 (see further comments below). Furthermore, the affidavit indicates that for decades ALDI SÜD Dienstleistungs-GmbH & Co. oHG and regional companies of the ALDI SÜD Group have educated young talents at all levels, from Store Manager to Managing Director being trained and educated through basic and advanced seminars at the ALDI SÜD Academy. These statements are supported by documents attached as Items B2 and B3 (see further comments below). The affidavit also includes a table covering the years from 2013 to 2016 with printing costs in euros and numbers of issues of recruitment materials circulated with different titles, such as ‘Education at ALDI SOUTH’, ‘Attractive entry options at ALDI SOUTH’ and ‘Your entry as regional sales manager’. Finally, the affidavit states that exemplary copies of recruitment documents, such as job advertisements and advertisements concerning education are attached as Items B4-B10 (see further comments below).

• Item B1: extracts from two undated brochures called ‘The dual Bachelor study program at ALDI SÜD’ and ‘The dual Master study program at ALDI SÜD. Your entry to the management career’ respectively. Both brochures are in German together with partial English translations thereof and provide information about the study programmes offered in collaboration with, in particular, ESB Business School which is expressly mentioned. The brochures also feature use of the following sign:

An informative text in German that is undated and includes no source indication together with an English translation thereof and which indicates that ESB Business School offers an international retail management programme in two variants in cooperation with the Knowledge Foundation Reutlingen University (KFRU), namely one since 2012 which is an exclusive variant for ALDI SÜD/HOFER employees and as of autumn 2016 an open variant available for employees of different companies as well as for private individuals. Extracts in German together with English translations thereof from KFRU’s website with information about the ‘International Retail Management (M.A.) Aldi South/Hofer’ dual master study programme. An article dated 22/02/2013 in German from the website www.lebensmittelzeitung.net together with an English translation thereof relating to an interview with Prof. Gerd Nufer who leads the master programme ‘International Retail Management’ at ESB Reutlingen University Business School and which indicates, inter alia, that the programme was developed in close cooperation with Aldi Süd and that all students are Aldi Süd employees. An extract in German from the website www.reutlingen-university.de with a partial English translation thereof concerning a news flash from 19/04/2016 indicating that a lecture hall called ‘Lecture Hall Aldi South’ was recently inaugurated.

• Items B2 and B3: extracts in German from a document with the heading ‘ALDI SÜD AKADEMIE’ with an English translation of its title, ‘Seminar and qualification program for group leader and managing directors’ and a translation of the indication that the document originates from ‘Bous, Human Resources, September 2013’. Extracts in German from another document with the heading ‘ALDI SÜD AKADEMIE’ with an English translation of its title, ‘Education and qualification program for trainees, young executives, surrogates and prospective commercial specialists’ and a translation of the indication that the document originates from ‘Bous, Human Resources, May 2014’.

• Items B4-B10: undated extracts from a brochure or catalogue in German with an English translation of the headings of the respective extracts, namely ‘Junior Branch Manager (m/f) at ALDI SOUTH’, ‘Branch Manager (m/f) at ALDI SOUTH’ and ‘Deputy Branch Manager (m/f) at ALDI SOUTH’. Extracts from two undated brochures in German together with partial English translations thereof with information about career opportunities at ALDI SÜD with the following titles: ‘The management career at ALDI SÜD. Your entry as Regional Sales Manager’ and ‘The entry to IT world of ALDI SOUTH. For students, graduates, professionally experienced’. Extracts from an undated brochure in German together with partial English translations thereof with the title ‘Education at ALDI SOUTH. For a diverse start into work life’ and providing information why one should start with an apprenticeship at ALDI SÜD and the advantages with a career at ALDI SÜD. Extracts from a brochure in German dated 29/07/2014 together with partial English translations thereof with the title ‘Training and dual study at the IT at ALDI SÜD. More connection for your beginning career’. All brochures or catalogues feature the following sign:

In addition, on 21/06/2016 the opponent submitted its further facts, evidence and arguments in support of the opposition which included evidence to substantiate its claim that the earlier mark enjoys a high degree of distinctiveness because it is well-known to consumers in the European Union. This evidence must also be taken into account as potential proof of use of the earlier mark in relation to the services concerned. In this respect, the opponent submitted the following evidence:

• A Wikipedia extract about Aldi indicating, inter alia, that Aldi is a leading global discount supermarket chain with almost 10,000 stores in 18 countries and an estimated turnover of more than €50 billion and that Aldi is active in the retail industry.

• A copy of two studies provided by AC Nielsen in 1997 and 2003 called ‘The Discounter as Judged by the Consumer’.  

• A copy of an article in German dated 17/09/2004 and called ‘Aldi avanciert zur Topmarke’ (translated by the opponent as ‘Aldi moves up to become top trademark’). According to the opponent the article is taken from the German newspaper ‘Lebensmittelzeitung’ (‘food news’).

• A copy of an article in German called ‘Die Deutschen lieben Porsche und Aldi’ together with an English translation thereof. It refers to the results of a study concerning, inter alia, the reputation of ‘ALDI’ as perceived by German consumers. According to the opponent the article is from the German newspaper ‘Handelsblatt’ on 15/11/2004.

• Excerpts from a judgment of the Appeal Court in Hamm/Germany of 01/04/2003 (file ref. No.: 4 U 157/02) together with a partial English translation containing statements about the well-known character in Germany of ‘Aldi’ supermarkets.

• A copy of an article with reference to www.tagesschau.de as a source and date of 15/11/2004. It indicates that the results of the study ‘Excellence Barometer 2004’ shows that, in consumers’ opinion, Germany’s most successful company is the discounter chain Aldi.
• A copy of the announcement of the results of the 2005 study of ‘Reader’s Digest European Trusted Brands’ in Germany where ‘ALDI’ was voted the most trusted brand in the field of trade companies.

• A copy of the results of ‘ShopperTrends Europe 2004’ of AC Nielsen, mentioning ‘ALDI’ among the three strongest marks of retail companies in Europe.

• A copy of the results of ‘EXBA’, 2003, translated by the opponent as ‘Study “Benchmark” for the excellence in the German economy’ ranking ‘ALDI’ as number one.

• A copy of an article in German dated 08/04/2014 from the website www.markenartikel-magazin.de together with an English translation thereof. It indicates that Interbrand has published the study ‘Best Retail Brands’ where Aldi remained the strongest German retail brand.

• A copy of an article in English dated 27/05/2015 from the website www.campaignlive.co.uk. It indicates that Aldi has overtaken Tesco in BrandZ’s brand ranking ‘Top 100 Most Valuable Global Retail Brands’.

• A copy of BrandZ’s brand ranking ‘Top 100 Most Valuable Global Brands 2015’ listing Aldi as number 90 and indicating that the brand pertains to the category of retail.

Assessment of the evidence – factors

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).

According to Rule 22(3) EUTMIR, the evidence of use shall 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. These requirements are cumulative (05/10/2010, T-92/09, STRATEGI, EU:T:2010:424, § 43) and the opponent must thus prove each of these requirements. However, the sufficiency of the evidence as to the place, time, extent and nature of use has to be determined by considering the evidence submitted in its entirety.

The assessment of genuine use entails a degree of interdependence between the factors to be 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.

None of the evidence filed by the opponent concerns services in Classes 38, 40 or 42. Since the opponent did not furnish any evidence concerning the use of the earlier trade mark for services in any of these classes and did not argue that there were proper reasons for non-use either, the opposition must clearly be rejected insofar as it is based on this earlier mark in Classes 38, 40 and 42.

As regards the proof of use for services in Class 41 and as far as the affidavit under item B0 is concerned, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements are totally devoid of all probative value. The final outcome depends on the overall assessment of the evidence in the particular case. Nevertheless, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (invoices, advertisements, packaging, etc.) or evidence originating from independent sources. Therefore, the probative strength of the further material submitted is very important.

The affidavit provides certain indications of the extent of use of the earlier mark as it refers to educational services provided since 2012 in cooperation with several universities, training and education provided by the opponent for decades, printing costs for and numbers of issues circulated of different recruitment materials for the years 2013-2016. In addition, it also refers to recruitment documents such as job advertisements and advertisements concerning education. Nonetheless, as explained above, this information is provided by the opponent so its probative value depends on the strength of the further material submitted.

In view of this, it is necessary to assess the additional evidence to see whether or not the statements made in the affidavit are sufficiently supported by the other evidence.

The documents submitted in Item B1 give some information about Aldi study programmes given at ESB Business School and exclusively offered to Aldi employees since 2012 and evidence that a lecture hall called ‘Lecture Hall Aldi South’ was inaugurated at a university in Germany in 2016. However, these documents do not provide any information concerning the number of students attending these study programmes during the relevant time period, the costs for taking the same or any fees actually paid for services provided. Furthermore, apart from being outside the relevant time period ending in January 2014, the fact that a lecture hall at a German university is called ‘Lecture Hall Aldi South’ does not constitute use of the earlier mark in relation to the provision of educational services, or any other of the services concerned in Class 41 for that sake.

The documents submitted in Items B2 and B3 are documents from the opponent’s Human Resources department concerning seminars, education and qualification programmes for employees. As mentioned above, the condition of genuine use of a mark requires that the mark be used publicly and outwardly with a view to create or preserve an outlet for the relevant goods or services in the market. It follows that internal on the job training or education within a company does not constitute genuine use of a mark for training or educational services within the meaning of Article 15 EUTMR. As a result, the evidence submitted in Items B2 and B3 does not support use of the earlier mark for any of the services concerned in Class 41.

As regards the documents submitted in Items B4-B10, most of them, apart from being undated, concern employment offers and therefore bear no relevance to the issue of proving that the earlier mark has been used to provide services in Class 41. In addition, although the title of two brochures is ‘Education at ALDI SOUTH. For a diverse start into work life’ and ‘Training and dual study at the IT at ALDI SÜD. More connection for your beginning career’, the first brochure is undated and the second is dated July 2014 and is thus outside the relevant time period. Furthermore, these brochures do not give sufficient information as to the nature of the services concerned, or any information concerning the commercial volume of any services provided, if at all.

Finally, the printing costs and circulation figures indicated in the affidavit, apart from being described as concerning recruitment materials, are not supported by any factual evidence.

According to well-established case-law, genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (12/12/2002, T-39/01, HIWATT, EU:T:2002:316, § 47; 06/10/2004, T-356/02, VITAKRAFT, EU:T:2004:292, § 28).

The opponent did not submit any invoices for any services provided or any documents to prove the enrolment of any of the 295 students to the study programmes concerned, as alleged in the affidavit, or evidence to prove any costs or circulation, frequency and duration of any advertising of the services concerned publicly and outwardly.

Therefore, although the evidence submitted refers to Germany, which is part of the relevant territory, and, at least to some extent, also concerns the relevant time period, the affidavit and the additional material submitted cannot be considered to establish the extent of use of the earlier mark in the market for any of the services of education; providing of training; entertainment; sporting and cultural activities; providing of entertainment in the form of recorded music, recorded images and films in Class 41.

Furthermore, as regards the evidence submitted to substantiate the claim of enhanced distinctiveness through use, it only relates to the well-known character of the earlier mark in relation to retail services (Class 35) and to the opponent as a retail company. Therefore, this evidence does not assist to establish that the earlier mark under examination has been used for any of the services concerned in Classes 38, 40, 41 or 42.

In view of all the above and an overall assessment of the evidence submitted, in the absence of further supporting material, the opponent cannot be deemed to have proven, to the requisite legal standard, the extent of the use of international registration designating the European Union No 870 876 for any services in Class 41 and no evidence was submitted concerning the services in Classes 38, 40 or 42.

Conclusion

Since the opponent did not submit sufficient evidence concerning the extent of use of the trade mark for the registered services in Class 41, the Opposition Division concludes that the evidence furnished by the opponent is insufficient to objectively prove, without probabilities or suppositions, that the earlier trade mark was genuinely used in the relevant territory during the relevant period of time.

The methods and means of proving genuine use of a mark are unlimited. The above finding that genuine use has not been proven in the present case is due, not to an excessively high standard of proof, but to the fact that the opponent chose to restrict the evidence submitted (15/09/2011, T-427/09, Centrotherm, EU:T:2011:480, § 46).

As the proof of use submitted for international registration designating the European Union No 870 876 is insufficient as a whole to establish use of the mark for services in Classes 38, 40, 41 and 42, the opposition must be rejected insofar it is based on this earlier mark in these classes pursuant to Article 42(2) and (3) EUTMR and Rule 22(2) EUTMIR.

As regards the services covered by this earlier mark in Class 35, for the reasons explained above, the Opposition Division finds it appropriate to first assess the likelihood of confusion based on the other earlier rights invoked covering services in this class and will therefore not assess whether, or to what extent, the evidence as a whole may establish use of the earlier mark ‘ALDI’ for services in Class 35.

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 and services on which the opposition is based, as subsequently limited in relation to some of the earlier marks, are the following:

1. European Union trade mark registration No 10 609 287

Class 1: Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; Unprocessed artificial resins, unprocessed plastics; Manures; Fire extinguishing compositions; Tempering and soldering preparations; Chemical substances for preserving foodstuffs; Tanning substances; Adhesives used in industry.

Class 2: Paints, varnishes, lacquers; Preservatives against rust and against deterioration of wood; Colorants; Mordants; Raw natural resins; Metals in foil and powder form for painters, decorators, printers and artists.

Class 5: Pharmaceutical and veterinary preparations; Sanitary preparations for medical purposes; Dietetic food and substances adapted for medical or veterinary use, food for babies; Dietary supplements for humans and animals; Plasters, materials for dressings; Material for stopping teeth, dental wax; Disinfectants; Preparations for destroying vermin; Fungicides, herbicides.

Class 6: Common metals and their alloys; Metal building materials; Transportable buildings of metal; Materials of metal for railway tracks; Non-electric cables and wires of common metal; Ironmongery, small items of metal hardware; Pipes and tubes of metal; Safes; Goods of common metal not included in other classes; Ores.

Class 8: Hand tools and implements (hand-operated); Cutlery; Side arms; Razors.

Class 10:  Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; Orthopaedic articles; Suture materials.

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

Class 12: Vehicles; Apparatus for locomotion by land, air or water.  

Class 13: Firearms; Ammunition and projectiles; Explosives; Fireworks.

Class 14: Precious metals and their alloys and goods of precious metals or coated therewith, not included in other classes; Jewellery, precious stones; Horological and chronometric instruments.

Class 15: Musical instruments. 

Class 17: Rubber, gutta percha, gum, asbestos, mica and goods made from these materials and not included in other classes; Plastics in extruded form for use in manufacture; Packing, stopping and insulating materials; Flexible pipes, not of metal.

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; Animal skins, hides; Trunks and travelling bags; Umbrellas and parasols; Walking sticks; Whips, harness and saddlery.

Class 19: Building materials (non-metallic); Non-metallic rigid pipes for building; Asphalt, pitch and bitumen; Non-metallic transportable buildings; Monuments, not of metal.

Class 20: Furniture, mirrors, picture frames; Goods not included in other classes of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

Class 21: Household or kitchen utensils and containers; Combs and sponges; Brushes (other than for painting); Brush-making materials; Articles for cleaning purposes; Steelwool; Unworked or semi-worked glass (except glass used in building); Glassware, porcelain and earthenware not included in other classes.

Class 22: Ropes, string, nets, tents, awnings, sails, sacks and bags (not included in other classes); Padding and stuffing materials (except of rubber or plastics); Raw fibrous textile materials.

Class 23: Yarns and threads, for textile use.

Class 26: Lace and embroidery, ribbons and braid; Buttons, hooks and eyes, pins and needles; Artificial flowers.

Class 27: Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; Wall hangings (non-textile).

Class 37: Building construction; Repair; Installation services; Other than repair and installation work for construction and production of machines for filling with liquid or semi-liquid foodstuffs and accessories therefor.

Class 44: Medical services; Veterinary services; Hygienic and beauty care for human beings or animals; Agriculture, horticulture and forestry services.

Class 45: Legal services; Security services for the protection of property and individuals; Personal and social services rendered by others to meet the needs of individuals.

2. European Union trade mark registration No 2 071 728

Without having assessed the proof of use concerning this earlier mark, it is based on the following goods and services:

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 4: Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles, wax candles, nightlights (candles) and wicks.

Class 7: Household vacuum cleaners.

Class 9: Electric and electronic apparatus for recording, transmitting, inputting, outputting, storage and reproduction of data, images and sound; telecommunications apparatus, transmitting and receiving apparatus; parts of the aforesaid goods; batteries and accumulators; battery and accumulator charging equipment.

Class 16: Paper, cardboard and goods of these materials, included in class 16, in particular wrapping and packing paper, conical paper bags, paper bags, filter paper, advertising paper, letter and writing paper, table napkins of paper, paper towels, household rolls, toilet paper, linen of paper, namely handkerchiefs, mouth and face cloths, hand towels, table linen; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (included in class 16); playing cards; printers' type; printing blocks; carrier bags, carrier pouches, sachets and banners for shop windows of plastic foil or paper, being also for advertising purposes.

Class 24:  Textiles and textile goods, included in class 24, in particular fabrics, bath linen, bed linen, table linen; curtains.

Class 25: Clothing, footwear, headgear.

Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jams and jellies; eggs, milk and milk products, in particular butter, cheese, cream, quark, yoghurt, kefir (milk beverage), desserts having consistencies ranging from soft to frothy, made from milk and milk products with the addition of substances to create a consistency, such as food starch, gelatine and vegetable based thickeners and gelling agents, flavourings such as cocoa, coffee extract, fruit ingredients, and natural and/or artificial flavourings; edible fats and emulsifiers; edible oils and fats; meat, fish, fruit and vegetable preserves.

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; spices; ice.

Class 31: Agricultural, horticultural and forestry products as well as grains (as far as contained in class 31); live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt.

Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

Class 33: Alcoholic beverages (except beers).

Class 34: Tobacco; smokers' articles; matches.

Class 36: Financial affairs, in particular financial consultancy and purchasing consultancy for other companies.

3. European Union trade mark registration No 2 714 459

Without having assessed the proof of use concerning this earlier mark, it is based on the following services:

Class 35: Compilation (other than transport) of a variety of products, for others in a supermarket, in order that consumers may examine and purchase these products.

Class 36: Real-estate affairs.

4. European Union trade mark registration No 3 360 914

Class 35: Retailing in all product areas; online retailing in all product areas; operating supermarkets, retail outlets and discount retail outlets; advertising on the Internet, for others; providing information on the Internet, namely information about consumer products, consumer advice information and customer service information.

Class 38: Telecommunications; operation and provision of portals on the Internet.

Class 39: Transportation; packaging and storing of goods.

5. International registration designating the European Union No 870 876

For the reasons outlined above, genuine use has not been proven for any of the services covered in Classes 38, 40, 41 and 42. Therefore, assuming that the evidence of use would be sufficient for the services in Class 35, which has not been assessed, for the purposes of these proceedings this earlier mark may, at most, cover the following services:

Class 35: Advertising; business management; business administration; office functions; retailing in all product areas; online retailing in all product areas; operating supermarkets, retail outlets and discount retail outlets; advertising in the Internet, for others; providing information on the Internet, namely information about consumer products, consumer advice information and customer service information; arranging of commercial transactions for third parties, also on the Internet; arranging of contracts regarding the purchase and sale of goods, as well as the providing of services for others, also via the Internet.

6. European Union trade mark registration No 6 870 943

Class 7: Machines and machine tools; Motors and engines (except for land vehicles); Machine coupling and transmission components (except for land vehicles); Agricultural implements other than hand-operated; Incubators for eggs; Other than packaging machines for foodstuffs and other goods and accessories therefor.

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Automatic vending machines and mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment and computers; Fire-extinguishing apparatus.

Class 28: Games and playthings; Gymnastic and sporting articles not included in other classes; Decorations for Christmas trees.

7. European Union trade mark registration No 11 181 815 and

 

8. European Union trade mark registration No 11 181 823

Class 9: Electric and electronic apparatus and instruments for communication and telecommunication; Communications and telecommunications apparatus and instruments; Electrical and electronic apparatus and instruments all for processing, logging, storing, transmission, retrieval or reception of data; Apparatus and instruments for recording, transmission, amplifying or reproduction of sound, images, information or encoded data; Film cameras; Photographic apparatus, instruments and equipment; Image processing apparatus, instruments and equipment; Television and radio apparatus and instruments; Telecommunications, radio and television transmitters and receivers, apparatus for access to broadcast or transmitted programmes; Holograms; Computers; Programmed data carrying electronic circuits; Computer program; computer software; Discs, tapes and cables, all being magnetic data carriers; Blank and pre-recorded magnetic cards; Data cards; Memory boards; Smart cards; Cards containing microprocessors; Cards containing integrated circuits; Electronic identification cards; Calling cards, In particular SIM cards; Telephone credit cards; Credit cards; Debit cards; Cards for electronic games designed for use with telephones; Read only memories recorded on compact discs; Magnetic, digital and optical data carriers; Magnetic, digital and optical data recording and storage media (blank and pre-recorded); Computer software supplied form the Internet; Electronic publications (downloadable) provided on-line from databases for the Internet; Modems; Internet dongles.

Class 35: Advertising; Business management; Business administration; Office functions; Retailing relating to foodstuffs, washing and cleaning preparations, articles for cleaning purposes, disinfectants, cosmetics, sanitary articles, non-prescription medicines, food supplements, fireworks, electric apparatus/accessories, electronic devices and accessories therefor, computers and computer accessories, compact discs, computer hardware and software, lighting devices, tools, gardening implements and accessories therefor, bicycles and accessories therefor, car accessories, horological instruments and jewellery, stationery and office supplies, books and other printed matter, furniture and other furnishings, garden furniture, household and kitchen utensils and accessories therefor, household goods, bed covers, including pillows, bed linen, household textiles, clothing, headgear, footwear, sporting apparatus, playthings, leisure articles, namely articles for camping, hunting, fishing, air sports, music, water sports and drawing, foodstuffs for animals, plants, tobacco goods, including via the Internet; Operating supermarkets, retail outlets and discount retail outlets, namely retailing relating to foodstuffs, washing and cleaning preparations, articles for cleaning purposes, disinfectants, cosmetics, sanitary articles, non-prescription medicines, food supplements, fireworks, electric apparatus/accessories, electronic devices and accessories therefor, computers and computer accessories, compact discs, computer hardware and software, lighting devices, tools, gardening implements and accessories therefor, bicycles and accessories therefor, car accessories, horological instruments and jewellery, stationery and office supplies, books and other printed matter, furniture and other furnishings, garden furniture, household and kitchen utensils and accessories therefor, household goods, bed covers, including pillows, bed linen, household textiles, clothing, headgear, footwear, sporting apparatus, playthings, leisure articles, namely articles for camping, hunting, fishing, air sports, music, water sports and drawing, foodstuffs for animals, plants, tobacco goods; Advertising on the Internet, for others; Providing information on the Internet, namely information about consumer products, consumer advice information and customer service information; Arranging contracts for the buying and selling of goods and the provision of services, for others, including on the Internet (included in class 35); Database services, Namely collating and updating data of all kinds for others.

Class 37: Installation, maintenance and repair of telecommunications apparatus and systems, telephones, mobile telephones and telephone handsets, paging apparatus, radio paging apparatus, radio telephone apparatus, computers and personal organisers, computers, satellite transmitters and receivers; Information and consultancy relating to installation, maintenance and repair of telecommunications apparatus and systems, telephones, mobile telephones and telephone handsets, paging apparatus, radio paging apparatus, radio telephone apparatus, computers and personal organisers, computer hardware, satellite transmitters and receivers, provided online via a computer database, on the Internet or via other media; Information and advisory services relating to household construction, maintenance and repair all provided by means of a telecommunications link; Information and advisory services relating to vehicle maintenance and repair all provided by means of a telecommunications link, Information services relating to repair or installation, provided on-line from a computer database or the Internet; Updating of computer hardware.

Class 38: Telecommunications.

The contested goods and services are the following:

Class 9: Electronic publications; teaching apparatus; CD ROMs; DVDs; protective clothing.

Class 16: Printed matter; publications; magazines, books, journals, manuals; instructional and teaching materials (except apparatus); decalcomanias; diaries; posters, photographs.

Class 25: Clothing, footwear, headgear.

Class 35: Advertising and promotional services.

Class 41: Education and training services; setting of training standards; provision of skill assessment courses; operating lorry loader training programmes; certification of education and training awards; organisation of forums relating to the lorry loader industry.

Class 42: Advisory services relating to the design and manufacture of lorry loader cranes; provision of scientific and technological information; certification services.

Class 45: Consultancy services relating to health and safety; information services relating to health and safety; setting of standards for the lorry loader industry; instructor accreditation services; legal information services; political lobbying services; advisory services relating to the regulations applying to the design, manufacture, application and use of lorry loader cranes; legal advisory, negotiating and representational services, all provided by an association for its members relating to the lorry loader industry.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods or services.

The term ‘in particular’ used in the opponent’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’ used in the opponent’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

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. Nevertheless, once the wording of the goods and/or services to be considered has been identified, their meaning must be determined. In cases of doubt about the exact meaning of the terms used in the list of goods and/or services, these terms have to be interpreted both in the light of the Nice Classification and from a commercial perspective.

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 9

The contested electronic publications include, as a broader category, the opponent’s electronic publications (downloadable) provided on-line from databases for the Internet of earlier mark 8. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Teaching apparatus are identically contained in both lists of the contested goods and the goods of earlier mark 6.

The contested CD ROMs and DVDs are included in the broad category of the opponent’s optical data carriers of earlier mark 8. Therefore, they are identical.

The contested protective clothing is similar to the opponent’s life-saving apparatus and instruments of earlier mark 6. Examples of protective clothing in Class 9 are clothing and shoes for protection against accidents, irradiation and fire, clothing specially made for laboratories, protective helmets (including for sports), mouth guards and head guards for sports. The broad term of the contested protective clothing thus includes life-saving devices such as protective helmets to protect the lives of for example mountaineers, skiers, snowboarders, cyclists and motorcyclists in case of an accident. The goods share the same purpose, namely to prevent injury and to save lives. They may target the same relevant public, such as mountaineers or motorcycle drivers. Finally, they may also share the same retail outlets, for example, motorcycle or outdoor stores where helmets and life-saving apparatus like emergency devices are offered.

Contested goods in Class 16

The contested printed matter; publications; magazines, books, journals, manuals; instructional and teaching materials (except apparatus); decalcomanias; posters and photographs are similar to the opponent’s electronic publications (downloadable) provided on-line from databases for the Internet in Class 9 of earlier mark 8. The contested instructional and teaching materials (except apparatus) include text books and the like and the contested decalcomanias include images or pictures transferred onto paper. Therefore, all these goods can have the same purpose, be produced by the same undertakings and be in competition. Furthermore, they can target the same relevant public.

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested diaries are similar to a low degree to the opponent’s retailing relating to other printed matter (which includes diaries) in Class 35 of earlier mark 8.

Contested goods in Class 25

For the same reasons as those outlined above, the contested clothing, footwear and headgear are similar to a low degree to the opponent’s retailing relating to clothing, headgear, footwear in Class 35 of earlier mark 8.

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 a 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.

Therefore, the contested advertising and promotional services are either identically included in both lists or otherwise included in the opponent’s broad category of advertising of earlier mark 8. Therefore, they are identical.

Contested services in Class 41

The contested education and training services; setting of training standards; provision of skill assessment courses; operating lorry loader training programmes; certification of education and training awards are similar to the opponent’s electronic publications (downloadable) provided on-line from databases for the Internet in Class 9 of earlier mark 8 which may include teaching or training materials. In order to supply services involving education and training, it is both helpful and usual to provide teaching materials which may be available either physically or electronically, such as in the case at hand. Thus, undertakings offering any kind of course often provide those products to pupils as learning support materials (23/10/2002, T-388/00, ELS/ILS, EU:T:2002:260, § 55). Consequently, the opponent’s goods can be complementary to the contested education and training services; provision of skill assessment courses and operating lorry loader training programmes. Moreover, the contested services of setting of training standards and certification of education and training awards originate from the same providers as those providing education and training. As a result, all the contested services and the opponent’s goods can originate from the same undertakings, target the same relevant public and share the same distribution channels.

As mentioned above in the preliminary remark, the exact meaning of the terms used in the list of goods and/or services has to be interpreted in the light of the Nice Classification. Therefore, the meaning and nature of the contested organisation of forums relating to the lorry loader industry in Class 41 has to be interpreted in the context of this class. Class 41 covers mainly services rendered by persons or institutions in the development of the mental faculties of persons or animals, as well as services intended to entertain or to engage the attention as also indicated by its class heading education; providing of training; entertainment; sporting and cultural activities. Therefore, the meaning of the contested organisation of forums relating to the lorry loader industry must be interpreted as being, or at least as including, such services for educational purposes and its nature thus as also being educational. In view of this, the contested organisation of forums relating to the lorry loader industry are also considered similar to the opponent’s electronic publications (downloadable) provided on-line from databases for the Internet for the same reasons as those outlined above.

Contested services in Class 42

The contested provision of scientific and technological information is similar to the opponent’s scientific apparatus and instruments in Class 9 of earlier mark 6. These goods and services can target the same relevant public and originate from the same undertakings. Furthermore, the opponent’s goods can be complementary to the contested services.

The contested certification services are very specific services mainly consisting of services for testing, authentication and/or quality control of the goods and services of others for the purpose of certification. These services and all the opponent’s goods and services covered by earlier marks 1-8, as outlined above, have a different nature and purpose. They do not target the same relevant public and are offered by different undertakings. Furthermore, they are neither complementary nor in competition with each other. Therefore, they are dissimilar.  

The contested advisory services relating to the design and manufacture of lorry loader cranes have nothing in common with any of the goods or services covered by the earlier marks. They are offered by different companies and are sold to consumers with different needs. Furthermore, they are neither complementary to nor in competition with each other. Therefore, they are dissimilar.

Contested services in Class 45

Class 45 includes, in particular, services rendered by lawyers, legal assistants and personal advocates to individuals, groups of individuals, organisations and enterprises; investigation and surveillance services relating to physical safety of persons and security of tangible property; and services provided to individuals in relation with social events, such as social escort services, matrimonial agencies or funeral services.

In view of this, the contested setting of standards for the lorry loader industry; instructor accreditation services; legal information services; advisory services relating to the regulations applying to the design, manufacture, application and use of lorry loader cranes and legal advisory, negotiating and representational services, all provided by an association for its members relating to the lorry loader industry,  the exact meaning of which should be interpreted in the light of the nature of the services included in Class 45 as outlined above, must be interpreted as included in, or overlapping with, the opponent’s broad category of legal services of earlier mark 1. Therefore, they are identical.

The contested consultancy services relating to health and safety and information services relating to health and safety are similar to the opponent’s security services for the protection of property and individuals of earlier mark 1. These services can be complementary, have the same origin, distribution channels and target the same relevant public.

The contested political lobbying services concern activities that aim to influence legislators, etc. in the formulation of policies on behalf of others. These services are similar to the opponent’s legal services of earlier mark 1 since they can target the same relevant public, share the same distribution channels and be offered by the same companies since law firms, apart from providing legal advice, also often undertake lobbying activities on behalf of their clients.

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 and services found to be identical or similar to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods or services, the frequency of purchase and their price or terms and conditions of the purchased goods and services.

 

3. The signs

ALDI earlier marks 1 and 6 ALDI MOBILE earlier mark 8	ALLMI
Earlier trade marks 1, 6 and 8	Contested sign

The further assessment of a likelihood of confusion will focus on earlier marks 1, 6 and 8 since the contested goods and services that were found identical or similar to varying degrees were found identical or similar to goods and services covered by these earlier marks.

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 earlier marks 1 and 6 consist of the word mark ‘ALDI’ and the contested sign is the word mark ‘ALLMI’ both of which will be perceived as fanciful, distinctive words without any meaning throughout the relevant territory. The earlier mark 8 is the word mark ‘ALDI MOBILE’. In certain territories, such as for the English-speaking public in the European Union, the element ‘MOBILE’ will be perceived as having a meaning. In this respect, the element ‘MOBILE’ of this earlier mark constitutes in common parlance an abbreviated form for a ‘mobile phone’ (27/03/2014, T-554/12, AAVA MOBILE, EU:T:2014:158, § 57; 27/02/2014, R 565/2013-1, LOTTOMOBILE, § 27 and 23/07/2012, R 242/2012-4, MOBILECLOUD, § 15). Furthermore, it is used in English, amongst others, as a suffix/prefix for forming nouns in order to indicate portability (05/02/2013, R 2378/2011-4, WEB.AffinityMOBILE / AFFINITY, § 33). Therefore, the element ‘MOBILE’ of earlier mark 8 will be regarded as a non-distinctive element simply describing the type or nature of the goods concerned. The same holds true with the services concerned in Class 35 since services can be offered or consumed while ‘being mobile’ (05/02/2013, R 2378/2011-4, WEB.AffinityMOBILE / AFFINITY, § 42). As a result, the element ‘MOBILE’ does not play an independent, distinctive role in the earlier mark 8 for the English-speaking part of the public in the relevant territory (06/10/2005, C-120/04, Thomson Life, EU:C:2005:594).

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.

In view of the above considerations, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public. In this respect, the English-speaking part of the public may not only be the public in the United Kingdom, Ireland and Malta who are native English speakers, but also the public who has sufficient knowledge of English. In this respect, it is a well-known fact that the general public in the Scandinavian countries, the Netherlands and Finland has a basic understanding of English. This also applies to Cyprus (09/12/2010, T-307/09, Naturally active, EU:T:2010:509, § 26-27; 22/05/2012, T-60/11, Suisse Premium, EU:T:2012:252, § 50). Therefore, the English-speaking part of the public who will perceive the meanings of the element ‘MOBILE’ as described above will also encompass, at least, all the territories referred to above.

Visually, the earlier marks 1 and 6 and the contested sign consist of one word. The first two letters ‘AL’ and the last letter ‘I’ of the signs are identical. A difference between the signs is only present in the middle portions where the letters ‘LM’ are present in the contested sign instead of the letter ‘D’ in the earlier marks. The length of the signs is similar, having four and five letters respectively.

Therefore, the earlier marks 1 and 6 and the contested sign are visually similar to an average degree.

As regards earlier mark 8, although it contains the additional verbal element ‘MOBILE’, it should be taken into account 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. Moreover, for the reasons outlined above, this element of earlier mark 8 is non-distinctive and consumers will also for this reason focus more on the distinctive element ‘ALDI’ at the beginning of the sign.

Therefore, the earlier mark 8 and the contested sign are also visually similar, albeit to a below average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territories under analysis, the letters ‛ALL’ in the contested sign will be pronounced as in the pronunciation of the word ‛ALLIANCE’. Therefore, the pronunciation of all the signs coincides in the first syllable ‛AL’. The pronunciation differs in the syllables ‛DI’ and ‛MI’ respectively in all signs. However, the respective second syllables end with the same letter ‛I’ and the pronunciation of them is also at least similar.

As regards the earlier mark 8, for the same reasons as those outlined above, the pronunciation of the additional word ‛MOBILE’ will have a relatively limited impact on the aural perception of the signs by consumers.

Therefore, the earlier marks 1 and 6 and the contested sign are aurally highly similar and the earlier mark 8 and the contested sign are aurally similar to an average degree.

Conceptually, neither of the earlier marks 1 and 6 and the contested sign 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 regards earlier mark 8, although the relevant public under analysis will perceive the meanings of the word ‘MOBILE’ as explained above, this element is non-distinctive and cannot indicate the commercial origin of the earlier mark. The attention of the relevant public will be attracted by the additional fanciful verbal element, which has no meaning. Therefore, the conceptual aspect does not influence the assessment of the similarity of the signs in relation to this earlier mark either.

The applicant claims that conceptually, it is widely known that the mark ‘ALDI’ is derived from Albrecht (one of the founders) and diskont (meaning discount) and that the mark ‘ALLMI’ is an acronym of ‘Association of Lorry Loader Manufacturers and Importers’, which it claims would also be known to the relevant public. However, the applicant did not submit any evidence that the mark ‘ALDI’ actually consists of this abbreviation as alleged. Moreover, even if the signs are meant to consist of the abbreviations and acronyms as contended, the applicant did not submit any evidence to support that the general public in the European Union would generally be aware of this and therefore perceive the signs in this way. The perception of the signs must be assessed as registered and as applied for and the Opposition Division does not consider, in the absence of any evidence to the contrary, that the relevant public would generally be aware that the signs in dispute consist of abbreviations or acronyms, even if this were the case as claimed by the applicant. Therefore, this argument of the applicant must be rejected as unfounded and cannot alter the conceptual comparison made above.

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.

According to the opponent, the earlier marks for ‘ALDI’ are highly distinctive due to the fact that they are well-known to consumers in most Member States. 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 marks will rest on their distinctiveness per se. In the present case, the earlier trade marks 1 and 6 have no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks 1 to 6 must be seen as normal. The distinctiveness of earlier mark 8 must also be seen as normal, despite the presence of a non-distinctive element in the mark as stated above in section c) of this decision, since it has no meaning as a whole.  

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18 and 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Such a global evaluation of the 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).

Account should also 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). 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).

In the present case the goods and services are identical, similar to varying degrees or dissimilar and the level of attention of the relevant public may vary from average to high.

All the earlier marks as a whole enjoy a normal degree of distinctiveness.

The contested sign and the earlier marks 1 and 6 are visually similar to an average degree, aurally highly similar and the conceptual aspect does not influence the assessment of the similarity of the signs since neither of the signs has any meaning. The contested sign and the earlier mark 8 are also visually similar albeit to a lesser extent on account of the additional verbal element ‘MOBILE’ in this earlier mark and are aurally similar to an average degree. Nevertheless, as stated above in section c) of this decision, the element ‘MOBILE’ is non-distinctive and the sole part of earlier mark 8 that will be perceived as indicating the commercial origin of the goods and services concerned is its first element ‘ALDI’. Therefore, even if this earlier mark contains and additional verbal element, the signs are still similar overall and there is no relevant concept that could help consumers to differentiate these signs either as explained above.

Therefore, not even the low degree of similarity between some of the relevant goods and services (for which the level of attention will be average) nor the higher degree of attention displayed by the public in relation to, in particular, some of the relevant services, can offset the overall similarity between all the signs, in particular bearing in mind the lack of a conceptual difference between them and considering that even consumers who pay a high degree of attention need to rely on their imperfect recollection of the signs.

Consequently, the Opposition Division considers that there is a likelihood of confusion on part of the relevant English-speaking public in the European Union within the meaning of Article 8(1)(b) EUTMR in relation to all the goods and services found to be identical or similar, including to a low degree only. 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.

The applicant argues that it already enjoys the benefit of the registration of another European Union trade mark containing the verbal element ‘ALLMI’ for the same goods and services in Classes 9, 16, 25, 35, 41, 42 and 45 applied for in 2008 and registered in 2009 and that this mark predates some of the opponent’s earlier marks invoked in these proceedings.

In this respect, it should be noted that the Office shall in principle be restricted in its examination to the trade marks in conflict. What is more, the right to a European Union trade mark (EUTM) begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant's contested EUTM. As a result, for the present proceedings, it is irrelevant that the applicant owns another EUTM containing the verbal element ‘ALLMI’ for the same goods and services and which predates some of the opponent’s earlier marks.

Furthermore, the applicant argues that it has used the contested sign in the UK since 1978, that it understands that the opponent opened its first store in the UK in 1990 and claims that the two parties have traded in peaceful co-existence in the marketplace for 27 years in the UK which, in its view, has a direct bearing on the likelihood of confusion. The applicant also submitted evidence of its own use of the contested sign in support of this claim. In this respect, suffice it to note that the assessment of a likelihood of confusion was not limited to the relevant public in the United Kingdom but to the English-speaking public in the European Union which, as explained above, also includes in this case, at least, the relevant public in Ireland, Malta, the Scandinavian countries, the Netherlands, Finland and Cyprus. As a result, this argument of the applicant, which is limited to the United Kingdom, cannot alter the finding of a likelihood of confusion reached above.

Finally, the Opposition Division notes that the applicant also argues that given the opponent’s claimed high distinctiveness of the earlier marks for ‘ALDI’ in relation to supermarket services, it is likely that the average consumer would not associate the contested sign ‘ALLMI’ with the earlier marks. In this respect, it should be noted that the more distinctive the earlier trade mark, the greater will be the likelihood of confusion (judgment of 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24). Therefore, marks with a highly distinctive character, enjoy broader protection than marks with a less distinctive character (judgment of 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18). This means that the fact that an earlier trade mark enjoys enhanced distinctive character or reputation is an argument in favour of finding likelihood of confusion. Therefore, regardless of whether or not the mark ‘ALDI’ is highly distinctive in relation to supermarket services, which has not been assessed in the present proceedings, the applicant’s argument that consumers would therefore be less likely to associate the signs in dispute cannot hold true.

In view of all the above, the opposition is partially well founded on the basis of the opponent’s European Union trade mark registration No 10 609 287, European Union trade mark registration No 6 870 943 and European Union trade mark registration No 11 181 823. It follows that the contested trade mark must be rejected for all the contested goods and services found to be identical or similar to varying degrees.

The rest of the contested services are dissimilar to all the goods and services of all the opponent’s earlier marks 1-8, even assuming that European Union trade mark registration No 2 071 728 and European Union trade mark registration No 2 714 459 have been used for all goods and/or services for which they are registered and that international registration designating the European Union No 870 876 has been used for all services in Class 35 for which the proof of use was not assessed. As similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this article and directed at these services cannot be successful.

Since a full assessment of the evidence of proof of use submitted in relation to European Union trade mark registration No 2 071 728, European Union trade mark registration No 2 714 459 and the services in Class 35 of international registration designating the European Union No 870 876 cannot change the findings reached above, there is no need to proceed to undertake a more thorough analysis of the same.

Moreover, since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their reputation as claimed by the opponent and in relation to identical and similar goods and services. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing marks in relation to dissimilar services, as the similarity of goods and services is a sine qua non condition for there to exist likelihood of confusion. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

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

Steve HAUSER

Sam GYLLING

Boyana NAYDENOVA

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.