OPPOSITION No B 2 593 880

Mantequerías Arias, S.A., Orense, 2, 28020 Madrid, Spain (opponent), represented by Curell Suñol S.L.P., Via Augusta 21, 08006 Barcelona, Spain (professional representative)

a g a i n s t

Muratbey Gida Sanayi Ve Ticaret Anonim Sirketi, Kocatepe Mah. Mega Center  A Blok No:1243-1250 Bayrampasa, Istanbul  34151, Turkey (holder), represented by Murat Gisi, Dillener Strasse 1, 28777 Bremen, Germany (professional representative).

On 06/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 593 880 is upheld for all the contested goods, namely 

Class 29:        Preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; milk and milk products; edible oils and fats.

2.        International registration No 1 232 744 is refused protection in respect of the European Union for all of the contested goods. It may proceed for the remaining goods.

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

REASONS:

The opponent filed an opposition against some of the goods of international registration designating the European Union No 1 232 744, namely against some of the goods in Class 29. The opposition is based on, inter alia, European Union trade mark registration No 136 333. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

The Opposition Division will first examine the opposition in relation to earlier EUTM No 136 333 for which the opponent claimed repute in Spain.

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 holder establishes due cause for the use of the contested trade mark.

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

1. The signs

BURGO DE ARIAS
Earlier trade mark	Contested sign

The relevant territory is Spain.

The contested sign consists of the stylised word ‘Burgu’ depicted in green with white and yellow edging.

The fact that the earlier trade mark is depicted in upper case and the contested sign in title case has no bearing on the comparison of the marks, because the earlier mark is a word mark. Protection is therefore granted for the words themselves, and not for the particular way in which the mark is written.

Visually, the signs are similar to the extent that they coincide in ‘BURG*’. However, they differ in ‘-O’/’-U’, the additional words of the earlier mark ‘DE ARIAS’ and the relatively basic stylisation of the contested sign. Consequently, the marks are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘BURG*’ present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the letters ‘-O’/’-U’ (although as they are vowels, these sounds are not strikingly different) and the sound of the letters ‘DE ARIAS’ of the earlier sign which have no counterparts in the contested mark. Consequently, the marks are aurally similar to an average degree.

Conceptually, the public in the relevant territory will perceive the meaning of the word ‘DE’ (‘from’) in the earlier trade mark. The other sign lacks any meaning in that territory. Although the word ‘Burgu’ might mean ‘drill’ in Turkish as asserted by the holder, this is irrelevant because the public in Spain does not speak Turkish and will, therefore, not attribute any meaning to the word ‘Burgu’. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

Taking into account the abovementioned visual and aural coincidences, the signs under comparison are similar. 

2. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in Spain.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the EU was designated in the contested international registration on 10/11/2014. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Spain prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 29:        Milk and milk products; all kinds of cheese.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 14/10/2015 and 21/07/2016 the opponent submitted the following evidence:

• Enclosure 1: website print-out with an article in Spanish entitled ‘El mercado de los quesos en España’. No translation was submitted.
• Enclosure 2: product catalogue of the opponent’s company, undated, showing the ‘BURGO DE ARIAS’ products among other products of the opponent.
• Enclosure 3: product catalogue in English from 2014 showing the ‘BURGO DE ARIAS’ fresh cheese. It is mentioned that ‘BURGO DE ARIAS’ is the flagship of the opponent, the benchmark in the fresh cheese market in Spain and a leader in that category. It is also mentioned that the history of the opponent’s company dates back to 1848 and that since 1978, it has been part of the Bongrain Group, one of the leading global dairy companies.
• Enclosure 4: annual report prepared by Alimarket in 2009 concerning Spain’s leading manufacturers and importers of cheese, ranking the opponent in the third position.
• Enclosure 4bis: company profile prepared by eInforma, mentioning, among other things, the sales figures of the opponent’s company in the area of EUR 130 million in 2014. The document also mentions an article published in ‘La Nueva España’ in February 2016 where ‘BURGO DE ARIAS’ is mentioned as the ‘star product’ of the opponent and a leading trade mark in its category in Spain.
• Enclosure 5: large number of articles from Spanish media concerning the ‘BURGO DE ARIAS’ fresh cheese, dated 2014 and 2016. It is repeatedly mentioned that ‘BURGO DE ARIAS’ is a market leader in the fresh cheese segment.
• Enclosure 6: full-page advertisements for the ‘BURGO DE ARIAS’ fresh cheese in the Spanish newspaper ABC from 2009.
• Enclosure 7: samples of advertisements published in Spanish magazines and newspapers, either dated 2016 or undated.
• Enclosure 8: screenshots from YouTube showing television advertising spots  for the ‘BURGO DE ARIAS’ fresh cheese from 1994, 2011, 2013 and 2016.
• Enclosure 9: article from the newspaper La Vanguardia from 2013 concerning the ‘Product of the Year’ awards where ‘BURGO DE ARIAS Cuchara’ won in the category of cheese.
• Enclosure 10: chart prepared by Infoadex showing the opponent’s advertising expenses relating to the ‘BURGO DE ARIAS’ fresh cheese in excess of EUR 2.8 million in 2015.
• Enclosure 11: chart showing the opponent’s advertising activities relating to ‘BURGO DE ARIAS’ on Spanish television in 2010.
• Enclosure 12: chart showing the opponent’s advertising activities relating to ‘BURGO DE ARIAS’ on Spanish television in 2014.

On the basis of the above the Opposition Division concludes that the earlier trade mark has a reputation in Spain for fresh cheese.

It is clear from the evidence that the earlier trade mark has been subject to long-standing and intensive use and is generally known in the relevant market, where it enjoys a consolidated position as the leading brand, as has been attested by diverse independent sources. The sales figures and the various references in the press to its success all unequivocally show that the mark enjoys a high degree of recognition among the relevant public. In addition, the holder does not dispute the reputation of the earlier trade mark.

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

∙        the degree of similarity between the signs;

∙        the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

∙        the strength of the earlier mark’s reputation;

∙        the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

∙        the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The signs under comparison are similar to an average degree. The contested sign ‘Burgu’ is highly similar to the element ‘BURGO’ which is placed in a prominent position at the beginning of the earlier trade mark. ‘BURGO’ has a separate distinctive role in the earlier mark because the remaining elements of the mark ‘DE ARIAS‘ will be perceived as referring to the house brand of the producer (‘from Arias’).

The goods for which the earlier trade mark enjoys reputation are the following:

Class 29:        Fresh cheese.

The contested goods are the following:

Class 29:        Preserved, dried and cooked fruits and vegetables; jellies, jams,                         compotes; milk and milk products; edible oils and fats.

There is a clear link between these goods because they are all basic foodstuffs aimed at the general public.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that when encountering the contested mark the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T-301/09, Citigate, EU:T:2012:473, § 96).

4. 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.

The opponent claims, among other things, the following:

The contested mark will ‘free-ride’ on the reputation and attractive powers of the opposing mark as those will be transferred to the goods covered by the contested mark, with the result that the marketing of those goods will be made easier by that association with the earlier mark which enjoys a reputation on the market. Thus, the consumers will purchase the goods with the contested mark ‘BURGU’ solely because of the association with the image of the reputed earlier mark ‘BURGO DE ARIAS’, which results in an unfair advantage taken of the distinctive character and repute of the latter.

In other words, the opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark.

Before examining the opponent’s claim, it is appropriate to recall that the opposition is directed against the following goods:

Class 29:        Preserved, dried and cooked fruits and vegetables; jellies, jams,                         compotes; milk and milk products; edible oils and fats.

As seen above, the earlier trade mark was found to have a reputation for:

Class 29:        Fresh cheese.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40).

The Opposition Division must agree with the opponent’s assertions on ‘free-riding’ mentioned above. Due to the similarity between the marks and the link between the goods (all being basic foodstuffs), the marketing of the contested goods under the contested mark ‘Burgu’ will be made easier by that association with the earlier mark 'BURGO DE ΑRIAS' which enjoys a reputation on the market.

On the basis of the above, the Opposition Division concludes that the contested trade mark is likely to take unfair advantage of the distinctive character or the repute of the earlier trade mark.

5. Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must be rejected for all the contested goods.

The holder argues that the contested mark is reputed in Turkey, that the mark is used for high-quality cheeses and, therefore, the holder does not need the opponent’s reputation to sell its products.

First, the Opposition Division notes that a potential reputation of the contested mark in Turkey has absolutely no impact on the perception of the mark by the public in Spain. Second, the holder’s intention is not a material factor. Taking unfair advantage of the distinctiveness or the repute of a trade mark does not necessarily require a deliberate intention to exploit the goodwill attached to someone else’s trade mark. What matters is the perception of the relevant public and its probable purchase behaviour in the context of the earlier reputed trade mark and the contested mark and its goods.

Given that the opposition is entirely successful under Article 8(5) EUTMR and based on the earlier EUTM No 136 333, it is not necessary to examine the remaining ground and the remaining earlier right on which the opposition was based.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

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

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

The Opposition Division

Richard BIANCHI

Vít MAHELKA

Lucinda CARNEY

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.