OPPOSITION No B 2 524 539

Newlat GmbH, Oberwerder Damm 11 – 21, 20539 Hamburg, Germany (opponent), represented by Harmsen Utescher, Neuer Wall 80, 20354 Hamburg, Germany (professional representative)

a g a i n s t

Van Berkel International S.r.l., Via Vittor Pisani 16, 20124 Milano, Italy (applicant), represented by Cuccia & Simino S.r.l., Corso di Porta Romana 23, 20122 Milano, Italy (professional representative).

On 07/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 524 539 is partially upheld, namely for the following contested goods:

Class 29:         Ready cooked meals consisting wholly or substantially wholly of meat; meat extracts; jellies (mentioned twice), jams, compotes, fruit and vegetable spreads; edible oils and fats.

Class 30:         Rice; syrups and treacles; mustard; vinegar; salts, seasonings, flavourings and condiments; prepared pizza meals; excluding pasta, egg pasta, pasta of all kinds, including with added vegetables, potatoes, dietary fibre, minerals and/or trace elements; excluding the aforesaid pasta in fresh, cooked, chilled or frozen form; and other than ready and semi-prepared meals based predominantly on pasta, all of the aforesaid meals in dehydrated or non-dehydrated form, including chilled or frozen.

2.        European Union trade mark application No 13 709 951 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 13 709 951, namely against all the goods in Classes 29 and 30. The opposition is based on German trade mark registrations No 614 949 and No 300 59 301 in relation to which the opponent invoked Articles 8(1)(b) and 8(5) EUTMR, and on international trade mark registration No 299 620, designating the Benelux countries, Germany, Spain, France, Italy, Hungary, Austria, Portugal and Romania, and European Union trade mark registration No 1 808 963, the latter two in relation to which the opponent only invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based.

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 09/02/2015. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union and the Benelux countries, Germany, Spain, France, Italy, Hungary, Austria, Portugal and Romania from 09/02/2010 to 08/02/2015 inclusive.

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

German trade mark registration No 614 949 for ‘BIRKEL’:

Class 30:        Flour, baby food, special doughs in a soup, pasta, pasta made with egg, macaroni, spaghetti, very thin noodles with different mouldings, tube pasta, soup noodles, cutted pasta, vermicelli, soup garnishes and spaetzli, pastry and confectionery, dietetic food.

German trade mark registration No 300 59 301 for :

Class 30:        Pasta, pasta made with egg, noodles of all kinds, including noodles with the addition of vegetables, potatoes, dietary fibre, minerals and/or trace elements; ready-prepared dough; all the foregoing also in fresh, precooked, chilled and deep-frozen form; ready-to-serve and semi-prepared dishes consisting mainly of pasta, potatoes, rice, vegetables, meat, spices and/or herb and cheese mixtures; all the foregoing dishes in dehydrated or non-dehydrated from, also chilled or frozen; sauces, salad sauces.

International trade mark registration No 299 620 for ‘BIRKEL’:

Class 29:        Sauces, meat, meat extracts, canned meat and fish; fruit and vegetable preserves; meat, fish, fruit and vegetable jellies, eggs, milk, butter, cheese, margarine, edible oils and fats.

Class 30:         Food pastes, particularly egg pastes, pastes for soups, flour and flour-milling products in the form of grains for food, condiments, spices; sauces; vinegar, mustard, cooking salt; coffee, artificial coffee, tea, sugar; honey.

Class 31:        Vegetables, fruits.

Class 32:        Fruit juices; syrup.

European Union trade mark registration No 1 808 963 for :

Class 30:        Pasta, pasta made with egg, noodles of all kinds, including noodles with the addition of vegetables, potatoes, dietary fibre, minerals and/or trace elements; ready-prepared dough; all the foregoing goods also in fresh, precooked, chilled and deep-frozen form; ready-to-serve and semi-prepared dishes consisting mainly of pasta, potatoes, rice, vegetables, meat, spices and/or herb and cheese mixtures; all the foregoing dishes in dehydrated or non-dehydrated form, also chilled or frozen; sauces, salad sauces.

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 31/03/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 05/06/2016 to submit evidence of use of the earlier trade marks. This deadline was extended and expired on 05/08/2016. On 19/07/2016, within the time limit, the opponent submitted evidence of use. Furthermore, the Opposition Division will also take into account the evidence that was submitted on 25/11/2015 for filing further facts, evidence and arguments.

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

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

25/11/2015 (evidence is in German, partially translated into English):

• Some excerpts from the ‘Birkel’ website which show that the opponent offers different types of pasta and sauces under the trade mark .

• Consumer polls to demonstrate the achieved prominence of ‘Birkel’ trade marks in Germany for pasta and related products. The consumer polls are executed by the company ‘IPSOS’, a global market research company (ipsos.com), through the ‘Brigitte Kommunikationsanalyse’ that focuses on three aspects: popularity, sympathy and the use of the specific trade marks. The results of the poll are based upon more than 5000 interviews with consumers in Germany. The survey has been repeated for every 2 years within the last 3 decades. According to these consumer polls the prominence of the ‘Birkel’ trade mark amounted in 2002 to 89%, in 2004 to 86%, in 2006 to 87%, in 2008 to 84% and in 2012 to 85% of the German consumers.

• A survey by ‘Reader’s Digests’ of ‘European Trusted Brands’, in which is mentioned that the trade mark ‘Birkel’ has reached the 5th grade on the list of the top 10 trade marks for food in Germany. The poll is based on a written interview (online) and represents consumers between 20 and 59 years and is conducted in 15 countries, including Germany.

• A document showing that the product ‘Birkel Pasta Klassiker’ has been awarded with the ‘Gold Medal’ by the professional trade publication ‘LebensmittelPraxis’ as ‘Product of the year’ in 2013. The same applies to the new product ‘Birkel Edition Schwabische Hausmacher Spatzle’ as ‘Product of the year’ in 2015.

19/07/2016:

• An Affidavit by Mr. Paolo Vincenzo Muci, serving as a General Manager of Newlat GmbH since 01/12/2015. He confirms that the trade marks ‘Birkel’ (word and figurative) are widely used in Germany for many types of pasta, sauces and convenience and instant food from 2010 until 2015. The Affidavit also provides information on the amount of kilograms of pasta/containers which have been distributed under the label ‘Birkel’ within the relevant period of use (2010 to 2015) in Germany for pasta, pasta minute and sauces (the number of kilograms is for a very substantial amount, which, for reasons of confidentiality, cannot be revealed). Furthermore, it gives information on how and for which respective goods of Classes 29 and 30 the prior trade marks have been used and the time and place of use. The high amount of distributed ‘Birkel’ packages/containers provides information on the extent of use. Mr Muci also confirms that for example in 2014 the company ‘Birkel’ spent nearly EUR 1,000,000.00 on printed and online media and in 2015 it was more than EUR 350,000.00.

• Advertising magazines, brochures and folders distributed between 2012 and 2015. From the magazines ‘Lebensmittelpraxis’, ‘Eat smarter’, ‘Alles Gute’, ‘Rundschau fur den Lebensmittelhandel’, ‘mein Coop’, ‘Der Frau’, the products, namely all kinds of pasta, sauces and Gulasch (ready-to-serve and instant food), labelled with the trade mark ‘Birkel’, are represented. The following logos ,  appear on top of the packages and on several pages of the above mentioned documents.

• An enclosure showing a detailed overview of the single items covered under the trade marks ‘Birkel’ and illustrating the high amount of sold kilograms of pasta between 2010 and 2015.

• A high number of copies of invoices dated between 2010 and 2015, which have been forwarded to big discounters and shops like ‘Rewe-Zentralfinanz AG’, ‘Penny Markt GmbH’, ‘Kaufland’, ‘Kraft Foods Europe’, ‘Netto Supermarkt GmbH’, ‘Metro Cash & Carry Deutschland’, ‘Norma Lebensmittel’, ‘Edeka Zentrale AG’, ‘Aldi GmbH & Co. KG’. The trade mark ‘Birkel’ is mentioned in the description of the goods and the number of sales is quite impressive (which for reasons of confidentiality cannot be revealed in the present case).

• Some pricelists from the years 2014 and 2015 presenting the single items labelled with the mark ‘Birkel’, as well as their prices.

• Photos of packages labelled with the trade mark ‘Birkel’ and the mark shown on stands at international fairs in Germany (Munich, Cologne and Neus in 2013 and 2014). The mark is represented as ,  .

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 marks (at least with respect to some of the goods) during the relevant period in the relevant territory.

As far as the Affidavit 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 do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources. Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence. The remaining evidence will be examined below.

The applicant further argues that the opponent did not submit translations of the invoices (Annexes 1 and 2) 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 above mentioned documents which have been translated only partially (one sample invoice for each year) and are considered relevant for the present proceedings, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.

The evidence shows that the place of use is Germany. This can be inferred from the language of the documents (German), the prices are in Euros and the advertisements, brochures, invoices and folders target the German public (shops and supermarkets on top of the invoices are all located in Germany as well). In this sense, according to Article 15(1) and Article 42(2) EUTMR, if the earlier mark is a European Union trade mark, it must be used in the European Union. However, genuine use with the meaning of Article 15 EUTMR may also be found when the criteria of that article have been complied with in only one part of the European Union, such as in a single Member State or in a part thereof. Therefore, it is considered that the evidence proves that the earlier European Union trade mark has been used in the relevant territory. For the sake of completeness, the Opposition Division points out that regarding the other earlier marks, they are protected in Germany (two national marks) and the international mark is also designated for Germany. The Opposition Division points out that anyway the submitted evidence is not sufficient for the remaining countries designated by the international mark, as nothing was filed in connection with those countries.

As previously mentioned, the opponent was required to prove that the trade marks on which the opposition is based were put to genuine use during the period from 09/02/2010 to 08/02/2015. Even though the pictures of the products, the labels, the packages, etc. do not contain any date, for example the invoices show sales during the relevant dates. Also the advertisements and brochures fall inside of the relevant period. Therefore, in the view of the Opposition Division, the evidence of use filed by the opponent contains sufficient indications concerning the time of use, also because the opponent has submitted material covering almost the whole period and the use is evenly distributed over this period of five years.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

In particular the invoices show that the total number of goods sold amounts to a very considerable number of sales, the number of which cannot be revealed due to confidentiality, as pointed out already, to clients in Germany, in particular large supermarkets, during almost the whole five-year period between 2010 and 2015. All this provides the Opposition Division with sufficient information concerning the commercial volume, territorial scope, duration, and frequency of use and give sufficient indications concerning the extent of the use of the earlier marks. Also the survey indicates that in 2012 the prominence of the ‘Birkel’ trade marks amounted to 85% amongst the German consumers, which is quite a high indication.

Regarding the nature of use, the Opposition Division points out the following: In the present case, two of the earlier marks ‘BIRKEL’ are word marks. However, apart from the mentioning of the mark as a word in the invoices, in the evidence it almost always appears on the packages, in the brochures, folders, stands of fairs, etc. as a figurative mark. Furthermore, two earlier marks are figurative ones and have been registered as . However, in several documents the trade marks are displayed in the following manner: ,  . 

Article 15(1)(a) EUTMR mentions that use of the mark in a form different from the one registered still constitutes use of the trade mark, as long as it does not alter the distinctive character of the trade mark. This means that differences between the form in which the mark is used on the market and the registered form are acceptable as long as the distinctive character of the mark is not altered. The purpose of this provision is to allow its proprietor to make variations in the sign which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006), T-194/03, Brainbridge, EU:T:2006:65, § 50). Nevertheless, in this case the alterations confined to the stylisation of the script and ‘colours’ and in case of the figurative marks the darker colour blue and yellow and the slightly different line at the bottom in one of the representations, do not constitute an alteration of the distinctive character of the word marks ‘Birkel’ and figurative marks ‘Birkel’ given that these differences only lie in the decorative elements of the marks. Therefore, there is sufficient use of the marks as registered or of a variation thereof according to Article 15(1)(a) EUTMR.

However, the evidence filed by the opponent does not show genuine use of the trade marks for all the goods covered by the earlier trade marks.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

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

German trade mark registration No 614 949 for ‘BIRKEL’:

Class 30:        Pasta, pasta made with egg, macaroni, spaghetti, very thin noodles with different mouldings, tube pasta, soup noodles, cutted pasta, vermicelli, soup garnishes and spaetzli.

German trade mark registration No 300 59 301 for :

Class 30:        Pasta, pasta made with egg, noodles of all kinds, including noodles with the addition of vegetables, potatoes, dietary fibre, minerals and/or trace elements; all the foregoing also in fresh, precooked, chilled and deep-frozen form; ready-to-serve and semi-prepared dishes consisting mainly of pasta, potatoes, rice, vegetables, meat, spices and/or herb and cheese mixtures; all the foregoing dishes in dehydrated or non-dehydrated from, also chilled or frozen; sauces, salad sauces.

International trade mark registration No 299 620 for ‘BIRKEL’:

Class 29:        Sauces.

Class 30:         Food pastes, particularly egg pastes, pastes for soups; sauces.

European Union trade mark registration No 1 808 963 for :

Class 30:        Pasta, pasta made with egg, noodles of all kinds, including noodles with the addition of vegetables, potatoes, dietary fibre, minerals and/or trace elements; all the foregoing goods also in fresh, precooked, chilled and deep-frozen form; ready-to-serve and semi-prepared dishes consisting mainly of pasta, potatoes, rice, vegetables, meat, spices and/or herb and cheese mixtures; all the foregoing dishes in dehydrated or non-dehydrated form, also chilled or frozen; sauces, salad sauces.

With respect to the pasta mentioned in the earlier marks, the opponent has proved use for a wide variety of pasta. Consequently, all kinds of pasta, just to mention an example: noodles of all kinds, including noodles with the addition of vegetables, potatoes, dietary fibre, minerals and/or trace elements, will all be taken into account.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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

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

1. The goods

The goods on which the opposition is based, and for which use has been proven, are the following:

Class 29:        Sauces (No 299 620).

Class 30:        Pasta, pasta made with egg, macaroni, spaghetti, very thin noodles with different mouldings, tube pasta, soup noodles, cutted pasta, vermicelli, soup garnishes and spaetzli (No 614 949); pasta, pasta made with egg, noodles of all kinds, including noodles with the addition of vegetables, potatoes, dietary fibre, minerals and/or trace elements; all the foregoing also in fresh, precooked, chilled and deep-frozen form; ready-to-serve and semi-prepared dishes consisting mainly of pasta, potatoes, rice, vegetables, meat, spices and/or herb and cheese mixtures; all the foregoing dishes in dehydrated or non-dehydrated from, also chilled or frozen; sauces, salad sauces (No 300 59 301); food pastes, particularly egg pastes, pastes for soups; sauces (No 299 620); pasta, pasta made with egg, noodles of all kinds, including noodles with the addition of vegetables, potatoes, dietary fibre, minerals and/or trace elements; all the foregoing goods also in fresh, precooked, chilled and deep-frozen form; ready-to-serve and semi-prepared dishes consisting mainly of pasta, potatoes, rice, vegetables, meat, spices and/or herb and cheese mixtures; all the foregoing dishes in dehydrated or non-dehydrated form, also chilled or frozen; sauces, salad sauces (No 1 808 963).

The contested goods are, after a limitation on 17/11/2015, the following:

Class 29:         Salami; ham; sausages; meat; meat; fish; poultry; game; ready cooked meals consisting wholly or substantially wholly of meat; meat extracts; jellies; jellies, jams, compotes, fruit and vegetable spreads; eggs; milk; cheese products and substitutes therefor; cheese products; edible oils and fats.

Class 30:         Coffee; tea; cocoa; artificial coffee; rice; tapioca; sago; bread; baked goods, confectionery, chocolate and desserts; pastry confectionery; edible ices; sugars, natural sweeteners, sweet coatings and fillings, bee products; syrups and treacles; mustard; vinegar; salts, seasonings, flavourings and condiments; prepared pizza meals; excluding pasta, egg pasta, pasta of all kinds, including with added vegetables, potatoes, dietary fibre, minerals and/or trace elements; prepared pastry; excluding the aforesaid pasta in fresh, cooked, chilled or frozen form; and other than ready and semi-prepared meals based predominantly on pasta, all of the aforesaid meals in dehydrated or non-dehydrated form, including chilled or frozen.

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

The terms ‘particularly’ and ‘including’, used in the applicant’s and/or opponent’s list of goods, indicate that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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

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

Contested goods in Class 29

When comparing the contested ready cooked meals consisting wholly or substantially wholly of meat with the opponent’s ready-to-serve and semi-prepared dishes consisting mainly of meat; all the foregoing dishes in dehydrated or non-dehydrated from, also chilled or frozen in Class 30 (No 300 59 301 and No 1 808 963), these are highly similar. These goods have the same nature and purpose. They have the same distribution channels, target the same public, they are in competition and are normally produced by the same kinds of undertakings.

The contested jams, compotes, fruit and vegetable spreads are similar to the opponent’s sauces in Class 29 (No 299 620), which include any type of sauces, e.g. fruit and vegetable sauces. These goods have the same nature and purpose, are in competition, have the same distribution channels and target the same public.

The contested edible oils and fats are similar to the opponent’s sauces in Class 29 (No 299 620). These goods have the same purpose, method of use, target the same public and these goods are in competition.

The contested meat extracts are similar to a low degree to the opponent’s sauces in Class 29 (No 299 620). These goods have the same purpose, distribution channels, target the same public and have the same origin.

The contested jellies (mentioned twice) are similar to a low degree to the opponent’s sauces in Class 29 (No 299 620). These goods have the same purpose, distribution channels and target the same public.

When comparing the contested salami; ham; sausages; meat (mentioned twice); fish; poultry; game; eggs; milk; cheese products and substitutes therefor; cheese products with the opponent’s goods in Classes 29 and 30, the Opposition Division finds them dissimilar. Even though they have the same nature of being foodstuffs, this does not make these goods similar. It should be noted that the fact that one ingredient is needed for the preparation of a foodstuff will generally not be sufficient in itself to show that the goods are similar, even though they all fall under the general category of foodstuffs (26/10/2011, T-72/10, Naty’s, EU:T:2011:635, § 35-36). They serve another purpose, are not complementary or in competition. They can normally be found in different areas of supermarkets and may usually be produced by different kind of undertakings.

Contested goods in Class 30

The contested prepared pizza meals; excluding pasta, egg pasta, pasta of all kinds, including with added vegetables, potatoes, dietary fibre, minerals and/or trace elements; prepared pastry; excluding the aforesaid pasta in fresh, cooked, chilled or frozen form; and other than ready and semi-prepared meals based predominantly on pasta, all of the aforesaid meals in dehydrated or non-dehydrated form, including chilled or frozen overlap with the opponent’s ready-to-serve and semi-prepared dishes consisting mainly of pasta, potatoes, rice, vegetables, meat, spices and/or herb and cheese mixtures; all the foregoing dishes in dehydrated or non-dehydrated from, also chilled or frozen in Class 30 (No 300 59 301 and No 1 808 963). These goods are identical.

The contested mustard; vinegar are similar to a high degree to the opponent’s sauces in Class 30 (No 300 59 301). These goods have the same purpose, are in competition, have the same distribution channels, target the same public and these goods can be manufactured by the same kind of undertakings.

The contested salts, seasonings, flavourings and condiments; syrups and treacles are similar to the opponent’s sauces in Class 30 (No 300 59 301). These goods have the same distribution channels, target the same public and they can be manufactured by the same kind of undertakings.

When comparing the contested rice with the opponent’s pasta (No 614 949, No 300 59 301, No 299 620 and No 1 808 963), they are similar to a low degree. These goods have the same method of use, distribution channels and target the same relevant public.

When comparing the contested coffee; tea; cocoa; artificial coffee; tapioca; sago; bread; baked goods, confectionery, chocolate and desserts; pastry confectionery; edible ices; sugars, natural sweeteners, sweet coatings and fillings, bee products; prepared pastry with the opponent’s goods in Classes 29 and 30, the Opposition Division finds them dissimilar. Even though they have the same nature of being foodstuffs, this does not make these goods similar. It should be noted that the fact that one ingredient is needed for the preparation of a foodstuff will generally not be sufficient in itself to show that the goods are similar, even though they all fall under the general category of foodstuffs (26/10/2011, T-72/10, Naty’s, EU:T:2011:635, § 35-36). They serve other purposes, are not complementary or in competition. They can normally be found in different areas of supermarkets and are usually produced by different kind of undertakings.

2. Relevant public — degree of attention

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

In the present case, the goods found to be identical or similar (to various degrees) are directed at the public at large. The degree of attention is average.

3. The signs

BIRKEL
Earlier trade marks	Contested sign

The relevant territories are the European Union and Germany.

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). Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. Given that the earlier national and international marks cover Germany, the Opposition Division finds it more coherent and expedient to focus on the German-speaking part of the public for the European Union trade mark as well. For this part of the public the words ‘BIRKEL’ and ‘BERKEL’ are meaningless for the goods in question and are, therefore, normally distinctive.

As regards the earlier marks 2), they are composed of a distinctive verbal element ‘Birkel’ and of a less distinctive figurative element of a purely decorative nature, namely regarding the one in the form of a rectangular frame with a bold yellow line on the bottom part. This is not such an uncommon element and has a mere decorative nature. The public will not pay as much attention to this weak element as to the more distinctive word ‘Birkel’ of the earlier marks 2.

The earlier marks 1) are word marks and, thus, the word itself is protected, not its written form. Therefore, it is irrelevant whether a word mark is represented in lower or upper case or a combination of those letters.

Visually, the signs coincide in the sequence of letters ‘B-*-R-K-E-L’, the only difference being the slightly fancy typeface in which these letters are written in the contested sign and in the earlier marks 2). This element is also the most distinctive one in the earlier marks 2). On the other hand, they differ in the second letter ‘I’ of the earlier marks versus ‘e’ of the contested sign, in the figurative element of the earlier marks 2), a weak element anyway, and in the slightly fancy typefaces of the verbal elements of both marks.

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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). This is even more applicable in the case at hand with respect to the rectangular frame in the earlier marks 2), since this element is mere of a decorative nature and weak, as pointed out above.

Regarding the slightly fancy typefaces in which the verbal elements of the marks are written (earlier marks 2) and the contested sign), this stylisation must be considered not that elaborate or sophisticated and they will not lead the consumer’s attention away from the verbal elements they seem to embellish.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters /B-*-R-K-E-L/, present identically in all the signs. The marks differ in the sound of their second letters, ‘I’ versus ‘E’, which are anyway both vowels. Furthermore, all the marks are pronounced in two syllables, /BIR-KEL/ versus /BER-KEL/, and have a similar rhythm and intonation. The marks are aurally similar to a high 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.

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 marks

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that two of its marks (IR No 299 620 and EU No 1 808 963) are particularly distinctive by virtue of intensive use or reputation.

However, according to the opponent, the other two earlier marks (DE No 614 949 and DE No 300 59 301) have been extensively used and enjoy 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 marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal, despite the presence of a weak element in the earlier marks 2) as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

The goods at issue have been found partly identical or similar (to various degrees) and partly dissimilar and the level of attention is average. The earlier marks have a normal degree of distinctiveness.

The marks have been found visually similar to an average degree, aurally to a high degree and the conceptual aspect does not influence the assessment of the similarity of the signs.

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the German-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s German trade mark registrations No 614 949 and No 300 59 301, international trade mark registration No 299 620, designating Germany, and European Union trade mark registration No 1 808 963. 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 identical or similar (to various degrees) to those of the earlier trade marks.

In view of all the relevant factors in the present case and also the principle of interdependence between them, i.e. the principle that a lesser degree of similarity between the goods/services may be offset by a greater degree of similarity between the marks, the relevant public could be mistaken as to the origin of those goods that are similar even only to a low degree. The similarity of the signs outweighs the low similarity of these goods.

The rest of the contested goods 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 cannot be successful.

Since the opposition is partially successful on the basis of the inherent distinctiveness of all of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their extensive use/reputation as claimed by the opponent and in relation to identical and similar (to various degrees) goods. 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 goods, 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 marks enjoyed an enhanced degree of distinctiveness.

In respect of the applicant’s argument, in its observations of 09/10/2016, that the applicant uses the same marketing strategies, the Opposition Division notes that the deliberations of likelihood of confusion are restricted to the comparison of the conflicting signs as registered and applied for. Therefore, the applicant’s argument must be set aside. Furthermore, as to the applicant’s argument that its EUTM has a sort of reputation, the Opposition Division points out the following: The right to an 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 EUTM.

REPUTATION – ARTICLE 8(5) EUTMR

The opponent claims reputation for the earlier German trade mark registrations No 614 949 and No 300 59 301.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested sign. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

∙        it takes unfair advantage of the distinctive character or the repute of the earlier mark;

∙        it is detrimental to the repute of the earlier mark;

∙        it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

In the present case, apart from claiming a reputation and arguing that the signs are similar, the opponent did not submit any facts, arguments or evidence that could support the conclusion that use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

Article 8(5) EUTMR is not intended to prevent the registration of all marks identical or similar to a mark with reputation. According to established case-law, ‘once the condition as to the existence of reputation is fulfilled, the examination has to proceed with the condition that the earlier mark must be detrimentally affected without due cause’ (14/09/1999, C-375/97, Chevy, EU:C:1999:408, § 30).

As mentioned above, the opponent should have submitted evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, which could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

The opponent had a deadline until 25/11/2015 to file further facts, evidence and arguments, but besides sending some evidence, in particular the first three items that are mentioned in the section above about the proof of use, it did not put forward any coherent line of argumentation, which is necessary for the applicability of Article 8(5) EUTMR.

This is confirmed by Rule 19(2)(c) EUTMIR, which establishes that if the opposition is based on a mark with a reputation within the meaning of Article 8(5) EUTMR, the opponent must submit evidence showing that the mark has a reputation, as well as evidence or arguments demonstrating that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

In the present case, the opponent merely claims that use of the contested trade mark would take unfair advantage of, and/or be detrimental to, the distinctive character or repute of the earlier trade marks by merely clicking the appropriate box in the Notice of Opposition. However, there seems to be no good reason to assume that use of the contested trade mark will result in any such events occurring. Although potential detriment or unfair advantage cannot be completely excluded, this is insufficient, as seen above.

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

Given that the opponent could not establish that the contested sign would take unfair advantage of, or be detrimental to the distinctive character or repute of the earlier trade marks, the opposition is considered not well founded under Article 8(5) EUTMR.

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

Martin MITURA

Chantal VAN RIEL

Saida CRABBE

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.