Camposilio | Decision 2507641 – CAMPOFRIO FOOD GROUP, S.A. v. Società Il Fossato S.r.l.

OPPOSITION No B 2 507 641

Campofrio Food Group, S.A., Parque Empresarial La Moraleja, Avenida de Europa, 24, 28108 Alcobendas (Madrid), Spain (opponent), represented by Herrero & Asociados, Cedaceros, 1, 28014 Madrid, Spain (professional representative)

a g a i n s t

Società Il Fossato S.r.l., Via di Basciano, 805, 50036 Vaglia (Fl), Italy (applicant), represented by Stefano Merico, Via Eschilo, 190 int. 7, 00125 Roma, Italy (professional representative).

On 24/04/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 507 641 is partially upheld, namely for the following contested goods and services:

Class 29: Extra virgin olive oil; edible oils; olives, preserved; olive paste; olive pâtés; vegetable pate; olive products; vegetable-based products, included in this class; tapenades; pickles; preserves, pickles; pickles; goods preserved in oil.

Class 33: Wine; all the aforementioned goods with the exception of Rioja wines.

Class 35: Retailing, wholesaling and internet sale of wine, oil and all goods derived therefrom; retailing in relation to wine and oil; wholesaling in relation to wine and oil; organization of events, exhibitions, fairs and shows for commercial, promotional and advertising purposes.

2. European Union trade mark application No 13 464 391 is rejected for all the above goods and services. It may proceed for the remaining goods.

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 13 464 391. The opposition is based on the following earlier rights:

European Union trade mark registration No 11 031 821 for the figurative mark ;
European Union trade mark registration No 15 099 for the word mark ‘CAMPOFRIO’;
European Union trade mark registration No 7 467 988 for the figurative mark ;
Spanish trade mark registration No 1 808 466 (4) for the word mark ‘CAMPOFRIO’;
Spanish trade mark registration No 1 992 275 (2) for the figurative mark ;
Spanish trade mark registration No 1 992 291 (4) for the figurative mark
Spanish trade mark registration No 2 856 482 (0) for the figurative mark ;
Spanish well-known trade mark ‘CAMPOFRIO’ (word mark);
Spanish well-known trade mark (figurative mark);
Spanish well-known trade mark (figurative mark);
Spanish well-known trade mark ‘CAMPOFRIO’ (word mark);
Spanish well-known trade mark (figurative mark);
Spanish well-known trade mark (figurative mark);
Spanish well-known trade mark (figurative mark).

The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR in relation to earlier rights 1-7 and Article 8(2)(c) EUTMR in conjunction with Article 8(1)(b) EUTMR in relation to earlier rights 8-14.

PRELIMINARY REMARKS

Under Article 28(8) EUTMR, during the six-month period ending on 24/09/2016, proprietors of EU trade marks filed before 22/06/2012 and registered for the entire heading of a Nice class had the opportunity to declare that their intention at the time of filing was to cover goods and services beyond the literal meaning of that class heading, provided that the goods or services declared are included in the alphabetical list for the class of the edition of the Nice Classification in force on the date of filing.

Declarations for EU trade marks filed within the relevant period take effect from the moment of their entry in the Register.

The opponent filed declarations under Article 28(8) EUTMR in relation to earlier European Union trade mark registrations No 15 099 and No 7 467 988. The amendments to the lists of goods and services of these trade marks have been accepted and registered by the Office.

Considering that the present opposition was filed before the entry into force of the Amending Regulation, the Opposition Division will take into consideration the current amended lists of goods and services of the abovementioned earlier marks in its examination of the opposition.

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 some of the trade marks on which the opposition is based, namely earlier European Union trade mark registrations No 15 099 and No 7 467 988 and earlier Spanish trade mark registrations No 1 808 466 (4), No 1 992 275 (2), No 1 992 291 (4) and No 2 856 482 (0).

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 07/01/2015. The opponent was therefore required to prove that the abovementioned trade marks on which the opposition is based were put to genuine use in the European Union and Spain, respectively, from 07/01/2010 to 06/01/2015 inclusive.

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

European Union trade mark registration No 15 099 for the word mark ‘CAMPOFRIO’

Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams; compotes; eggs, milk and milk products; edible oils and fats, preserves based on meat, fish, poultry and game. consommés; soup (preparations for making -).

European Union trade mark registration No 7 467 988 for the figurative mark Image representing the Mark

Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes, dietetic substances adapted for medical use, food for babies; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

Class 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats; soup (preparations for making -); soups.

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

Class 31: Agricultural, horticultural and forestry products and grains not included in other classes; 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 35: Advertising; business management; business administration; office functions.

Class 39: Transport; packaging and storage of goods; travel arrangement.

Spanish trade mark registration No 1 808 466 (4) for the word mark ‘CAMPOFRIO’

Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies and jams; eggs, milk and other milk products; edible oils and fats; preserves; meat, fish or vegetable-based prepared dishes.

Spanish trade mark registration No 1 992 275 (2) for the figurative mark

Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and pulse, vegetables, meat and fish; jellies and jams; eggs, milk and other milk products; edible oils and fats; meat, fish or vegetable-based prepared dishes.

Spanish trade mark registration No 1 992 291 (4) for the figurative mark

Spanish trade mark registration No 2 856 482 (0) for the figurative mark

Class 29: Meat, fish, poultry and game; meat extracts; dried, preserved, cooked and frozen fruits and vegetables; dried, preserved, cooked and frozen pulse; preserved, dried, cooked and frozen meat and fish; compotes, jellies and jams; eggs, milk and other milk products; edible oils and fats; meat, fish or vegetable-based prepared dishes.

Class 35: Advertising services and assistance in the operation or management of a commercial or industrial business; business administration; office functions, import-export agency services; retail, wholesale or sales services via worldwide computer networks; sole agency and representation services.

Class 39: Transport, packaging, storage and distribution of goods; travel arrangement.

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 09/10/2015, in accordance with Rule 22(2) EUTMIR, the Office gave the opponent until 09/12/2015 to submit evidence of use of the earlier trade marks.

The opponent had already submitted the following documents, on 16/06/2015, in support of its opposition (first batch):

Annex 1: an editable text document prepared by the opponent containing the sign , some information about the brand in Spanish (translated into English in the opponent’s observations) and three photographs of meat products bearing the sign . It is stated that the company Campofrío is a leader on the Spanish market in relation to a wide range of food products, selling to over 250 million consumers in over 45 countries. The opponent claimed, in its observations, that the information in this document was extracted from the website www.marcasrenombradas.com

Annex 2: an editable document in Spanish (translated into English in the opponent’s observations) prepared by the opponent containing a graph of the market share figures for prepared meats for 2009-2013. The document does not contain an indication of the territory concerned. According to the opponent, the source of the information is Nielsen.

Annex 3: an editable document in Spanish (translated into English in the opponent’s observations) prepared by the opponent containing two tables giving the investment figures in marketing for 2007-2013 (presumably in euros), in which one of the rows refers to ‘CAMPOFRIO’. According to the opponent, the source of the information is Infoadex.

Annex 4: a document of 17 pages in Spanish (some parts have been translated into English in the opponent’s observations) prepared by the opponent containing a compilation of articles prepared for publication, relating to the company or the brand ‘Campofrío’, with indications of the number of words, the date and the Spanish media in which the articles were allegedly published. The dates indicated are between December 2009 and May 2014. An article from 14/04/2011 indicates that, in a ranking of 140 companies regarding reputation, the company Campofrío appears among the top 25 according to a report titled ‘Reputation Pulse Spain 2010’. An article from 23/12/2009 indicates that, according to a study by the newspaper Actualidad Económica, the ‘Campofrío’ marks were in the chart ‘Best Spanish Trademarks 2009’. An article from 29/10/2013 states that the company Campofrío was placed among the top 100 companies to work for in Spain in 2013. An article from 25/07/2013 refers to a report, ‘Top 100 Spanish Trademarks 2013’, produced by the independent consultancy firm BrandFinance, according to which the mark ‘Campofrío Food’ has fallen from a ranking of 29 to a ranking of 71. In an article dated 13/02/2013, the company Campofrío is mentioned as one of the top 10 companies in terms of business volume in the region Castile and León in Spain. An article dated 21/03/2012 puts the opponent among the most valued food companies in Spain in 2012 according to the study ‘Key Audience Research (KAR) on Corporate Reputation’, prepared by the market research company Ipsos. The same article mentions that 34% of those surveyed recognised the name ‘Campofrío’.

Annex 5: extracts dated March 2009 to April 2014 from the magazine Mundo Campofrío, which is issued by the opponent, showing the indication or on the covers of the issues together with an indication that the magazine is intended for the employees of Campofrío España. The extracts contain information in Spanish (the relevant parts have been translated into English in the opponent’s observations) about some of the opponent’s activities (e.g. the participation of the company in a financing programme), as well as references to some of the financial results of the company for particular years. A publication from March 2010 states that the promotional campaign ‘Cascos Azules’ has strongly increased the reputation of the trade mark ‘Campofrío’, leading to 79% of consumers recognising the trade mark spontaneously in relation to prepared meat products. Publications from 2010 mention that some of the sponsorships carried out during 2010 by the opponent were in relation to different forms of support of the Spanish national football team, European competition matches, etc., leading to the opponent’s trade mark being mentioned on Spanish radio stations and appearing in Spanish newspapers. The publications contain references to awards obtained by the company Campofrío in relation to advertising and marketing campaigns. It is also mentioned that the main social networking channels of the company have more than 40 000 followers. A publication from 2012 clarifies that the opponent’s company Campofrío has four leading trade marks – ‘Campofrío’, ‘Navidul’, ‘Oscar Mayer’ and ‘Revilla’ – and that the company is one of the best valued companies according to a study carried out by AECOC. A publication from 2013 points out that the mark ‘Campofrío’ has been selected as one of Spain’s trade marks of excellence by Superbrands. The same article mentions that, according to Millward Brown’s tracking of advertising and brand image, in 2012 the trade mark ‘Campofrío’ was ‘top of mind’ of 56% of those surveyed and was the trade mark with the highest value of those tracked.

Annex 6: an editable text document prepared by the opponent containing a list of various awards given to the company Campofrío in the period 2008-2013 in relation to advertising and marketing campaigns.

Annex 7: the opponent’s annual reports for 2008-2013 in Spanish containing financial information about the Campofrío Food Group (the opponent) with the logo used in relation to the company, and showing different trade marks of the opponent, including in relation to various processed meat products, pizzas and sandwiches. The opponent translated, in its observations, some of the information into English, referring to promotional campaigns of the opponent, mentioning, for example, a campaign in 2010 for ‘Campofrío’ pizza and referring to the unprecedented level of trade mark recognition of the brand ‘Campofrío’ in 2011. An extract from the annual report for 2012 mentions that the opponent’s company is Europe’s leading company within the processed meat market and that it sells its products in eight European countries and in the United States of America. Some of the information translated by the opponent from the annual report for 2013 refers to numbers of sales by the opponent and market share figures (e.g. that the trade marks ‘Campofrío’, ‘Navidul’ and ‘Oscar Mayer’ held a 34% share in hot dogs, a 22% share in turkey products, a 13% share in cooked ham and an 11% share in smoked ham in Spain).

Annex 8: a set of non-consecutive invoices (approximately 100) dated between 12/02/2009 and 07/02/2014, issued by the Campofrío Food Group, S.A., with an address in Alcobendas, Madrid, Spain (the opponent), to different entities with addresses in various Spanish cities and towns (e.g. Madrid, Barcelona, Asturias, Cantabria, Cordoba, Huelva, Seville, Toledo, Valencia, Valladolid). The sign appears at the top of each of the invoices above the opponent’s name. They are issued for goods indicated as, inter alia, ‘CAMPOFRIO’ with additional descriptive indications of the nature of the goods. The goods referred to in the invoices are various prepared meat products (e.g. ham, sausages, salami, turkey breast, chopped pork) and pizzas.

On 07/12/2015, within the time limit for submitting the requested evidence of use, the opponent submitted the following documents (second batch):

Annex 1: a document in Spanish prepared by the opponent containing an updated graph of the market share figures for prepared meats for 2009-2015. The document does not contain an indication of the territory concerned. According to the opponent, the source of the information is Nielsen.

Annex 2: a document prepared by the opponent containing an updated table giving the investment figures for 2007-2014 and for January-September 2015, referring to ‘CAMPOFRIO’. According to the opponent, the source of the information is Infoadex.

Annex 3: a dossier of press clippings in Spanish from print and online media, dated 07/01/2014-08/11/2015 and compiled by the company Llorente & Cuenca (the relevant parts have been translated into English in the opponent’s observations). The articles contain references to the company Campofrío. An article from 08/11/2014 mentions that Campofrío was ranked the 77th most attractive company for talent in Spain in 2014. The company is designated by the sign . An article from 13/09/2015 notes that the company Campofrío has been ranked 37th out of 100 companies in a ranking of the most responsible companies with the best corporate governance. Several other articles refer to the ranking of the opponent as an attractive employer. An article from 01/07/2015 lists the opponent as sixth among the companies with the best reputation. An article from 10/09/2015 contains statements from the opponent’s previous CEO and current CEO, referring to the company as ‘an international benchmark within the food sector’. An article from 31/10/2015 states that the company Campofrío is ranked as the fifth favourite company within the general population category.

Annex 4: a text document prepared by the opponent containing a list of awards given to the brand or company Campofrío in 2008-2015. It can be inferred from the references to some of the awards that they have been given in relation to advertising and marketing campaigns.

Annex 5: a set of non-consecutive invoices (approximately 40) dated between 07/03/2014 and 12/11/2015, issued by the Campofrío Food Group, S.A.U., with an address in Alcobendas, Madrid, Spain, to different entities with addresses in various Spanish cities and towns (e.g. Madrid, Barcelona, Cantabria, Cordoba, Gerona, Seville, Valencia). The sign appears at the top of each of the invoices above the opponent’s name. They are issued for goods indicated as, inter alia, ‘CAMPOFRIO’ or ‘CF’ with additional descriptive indications of the nature of the goods. The goods referred to in the invoices are various prepared meat products and pizzas.

Annex 6: an undated product catalogue of the opponent showing various processed meat products and pizzas bearing the mark .

Annex 7: a product catalogue of the opponent entitled ‘Hotel and catering solutions’, containing information about the history and growth of the opponent and showing pizzas, sandwiches and various processed meat products with the mark .

Annex 8: a text document in Spanish prepared by the opponent containing information about the company Campofrío and its strategy, stating that the company works with four main trade marks: ‘CAMPOFRÍO’, ‘OSCAR MAYER’, ‘REVILLA’ and ‘NAVIDUL’. The mark ‘CAMPOFRÍO’ is used for cooked ham, turkey, chicken, cold cuts, sausages and pizzas.

The evidence to be taken into account is all of the documents listed above.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods and services for which the earlier marks are registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

Earlier European Union trade mark No 7 467 988 and Spanish trade mark No 2 856 482 (0) – Assessment of genuine use

Nature of use

Having examined the material listed above, the Opposition Division finds that the evidence is insufficient to establish genuine use of earlier European Union trade mark No 7 467 988 and Spanish trade mark No 2 856 482 (0) for the figurative mark Image representing the Mark .

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

In the present case, the evidence demonstrates use of the sign Image representing the Mark as a company logo featuring the company’s name as its verbal element, without any clear reference to specific goods or services (e.g. in publications listing the opponent as one of the most attractive companies for talent in Spain in 2014 and in the annual reports showing the logo in relation to some of the divisions of the opponent’s group of companies). However, none of the evidence demonstrating use in relation to goods relates to this sign.

‘The purpose of a company, trade or shop name is not, of itself, to distinguish goods or services … The purpose of a company name is to identify a company, whereas the purpose of a trade name or a shop name is to designate a business which is being carried on. Accordingly, where the use of a company name, trade name or shop name is limited to identifying a company or designating a business which is being carried on, such use cannot be considered ‘in relation to goods or services’ within the meaning of Article 5(1) of the directive’, i.e. it cannot be considered to be used as a trade mark (11/09/2007, C-17/06, Céline, EU:C:2007:497, and 13/05/2009, T-183/08, Jello Schuhpark II, EU:T:2009:156).

The Opposition Division considers that the evidence featuring the sign Image representing the Mark does not demonstrate use of this sign as a trade mark in relation to any specific goods or services.

The rest of the evidence (e.g. the opponent’s product catalogues and the annual reports) demonstrates use of the sign in relation to specific goods, namely various processed meat products and pizzas.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, use of the sign cannot be considered use of the earlier marks Image representing the Mark as registered, since the distinctiveness of the former sign is affected by the omission of the distinctive and visually co-dominant flower-like colourful figurative element of the earlier marks and by the different overall graphical depiction and arrangement of the elements of the sign from that of the earlier marks.

The Opposition Division considers that the use of the sign cannot be considered to constitute a form of the earlier marks Image representing the Mark that does not alter the distinctive character of the sign. In view of the above, the Opposition Division considers that the evidence does not demonstrate use of the sign as a trade mark and as registered within the meaning of Article 15(1)(a) EUTMR for the goods and services for which it is registered. It also considers that the opponent has not provided sufficient indications concerning the nature of the use of these earlier marks. Consequently, the evidence is insufficient to prove that the abovementioned earlier trade marks were genuinely used in the relevant territory during the relevant period of time.

Conclusion

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).

The Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that earlier European Union trade mark No 7 467 988 and Spanish trade mark No 2 856 482 (0) were genuinely used in the relevant territories during the relevant period of time.

Therefore, the opposition must be rejected pursuant to Article 42(2) and (3) EUTMR and Rule 22(2) EUTMIR insofar as it is based on earlier European Union trade mark No 7 467 988 and Spanish trade mark No 2 856 482 (0).

The examination of the evidence of use continues in relation to earlier European Union trade mark No 15 099 and earlier Spanish trade marks No 1 808 466 (4), No 1 992 275 (2) and No 1 992 291 (4).

Earlier European Union trade mark No 15 099 and earlier Spanish trade marks No 1 808 466 (4), No 1 992 275 (2) and No 1 992 291 (4) – Assessment of genuine use

Place of use

The evidence must show that earlier European Union trade mark No 15 099 has been genuinely used in the European Union and that earlier Spanish trade marks No 1 808 466 (4), No 1 992 275 (2) and No 1 992 291 (4) have been genuinely used in Spain.

Following the judgment of 19/12/2012, C-149/11, Leno, EU:C:2012:816, § 44, Article 15(1) EUTMR must be interpreted as meaning that the territorial borders of the Member States should be disregarded when assessing whether or not an EUTM has been put to ‘genuine use’ in the European Union.

In territorial terms, and in view of the unitary character of the EUTM, the appropriate approach is to consider not political boundaries but market(s). Moreover, one of the aims pursued by the EUTM system is to be open to businesses of all kinds and sizes. Therefore, the size of an undertaking is not a relevant factor to establish genuine use.

It is impossible to determine a priori, and in the abstract, the territorial scope that should be chosen in order to determine whether the use of the mark is genuine or not. A de minimis rule cannot be laid down (19/12/2012, C-149/11, Leno, EU:C:2012:816, § 55). All the relevant facts and circumstances must be taken into account, including the characteristics of the market concerned, the nature of the goods or services protected by the trade mark and the territorial extent and scale of the use as well as its frequency and regularity (19/12/2012, C-149/11, Leno, EU:C:2012:816, § 58).

In the present case, the documents submitted show that the place of use is Spain. The invoices are in Spanish and were issued directly by the opponent (a Spanish company) to different entities with addresses in Spain. The opponent’s magazines and the other publications are also in Spanish.

Consequently, the evidence submitted suffices to establish that the sign was present in the market in the relevant territories, namely the European Union and Spain.

Time of use

Most of the evidence, including the majority of the invoices, most of the opponent’s magazines and some of the annual reports, is dated within the relevant period (from 07/01/2010 to 06/01/2015 inclusive). Furthermore, the opponent also submitted undated product catalogues. These documents have to be seen in conjunction with the dated evidence and, therefore, may still be taken into consideration. Therefore, the evidence sufficiently indicates the time of use.

Extent of use

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.

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

The documents filed, in particular the invoices, supported by the product catalogues and the magazines, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope and the duration and frequency of use.

The invoices issued by the opponent (Annex 8 of the first batch of documents and Annex 5 of the second batch) cover the full duration of the relevant period and demonstrate the frequency of use of the marks during that period. The evidence indicates a particularly high commercial volume of use and demonstrates that sales of goods offered under the earlier marks were made to various clients in Spain. Moreover, the fact that the invoices are non-consecutive and cover an extensive period, from 2009 to 2015, must be taken into consideration. Therefore, it can be inferred that the invoices were submitted merely as examples of sales and do not represent the total amount of sales of goods under the earlier marks realised by the opponent during the relevant period. As regards the earlier European Union trade marks, it should be noted that the territorial scope of the use is only one of several factors to be assessed in the determination of whether the use is genuine or not. Therefore, it is clear from the evidence submitted that the opponent distributed or provided goods under the earlier marks in the relevant market, and this gives the Opposition Division sufficient information regarding the commercial activities of the opponent throughout the relevant period. In any case, the documents prove that use of the marks has been more than mere token use.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier marks.

Nature of use

As seen above, in the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

The purpose of Article 15(1)(a) EUTMR, which avoids imposing strict conformity between the form in which the trade mark is used and the form in which it was registered, is to allow its proprietor, when exploiting it commercially, to vary it in such a way that, without altering its distinctive character, enables it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 50).

It is appropriate to consider whether the mark as used contains differences from its registered form that would affect its distinctive character or, in spite of some differences, the mark as used and its registered form are essentially the same.

In the present case, earlier European Union trade mark No 15 099 and Spanish trade mark No 1 808 466 (4) are registered for the word mark ‘CAMPOFRIO’. Earlier Spanish trade mark No 1 992 275 (2) is registered for the figurative mark . Earlier Spanish trade mark No 1 992 291 (4) is registered for the figurative mark.

The marks consist of or contain the distinctive verbal element ‘CAMPOFRIO’. This element, as a whole, has no clear or univocal meaning in relation to the relevant goods and services and, therefore, intrinsically, it is distinctive and is capable of identifying and distinguishing the goods and services for which it is registered.

The evidence submitted, in particular the opponent’s product catalogues and annual reports, demonstrates the sign used in relation to various processed meat products and pizzas.

As regards earlier Spanish trade marks No 1 992 275 (2) and No 1 992 291 (4) , despite some minor differences between the figurative elements (which are mostly decorative) of the marks as registered and of the marks as used, the signs as used are essentially the same as those as registered.

As regards earlier European Union trade mark No 15 099 and earlier Spanish trade mark No 1 808 466 (4), both registered for the word mark ‘CAMPOFRIO’, it should be noted that, in the case of word marks, the word as such is protected, not its written form. Although the sign as used in the documents submitted has a noticeable and somewhat original stylisation, the public will still instantly read and perceive the sign as ‘CAMPOFRIO’ and will perceive that the stylisation of the lettering and the figurative elements are simply a graphical means of drawing attention to this verbal element. In other words, consumers will clearly identify the goods as being offered under the mark ‘CAMPOFRIO’.

Therefore, the use of the marks in the manner described above does not materially affect the distinctiveness of the opponent’s European Union trade mark No 15 099 and Spanish trade marks No 1 808 466 (4), No 1 992 275 (2) and No 1 992 291 (4).

In view of the above, the Opposition Division considers that the evidence does show use of these signs as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

Overall assessment

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 earlier European Union trade mark No 15 099 and Spanish trade marks No 1 808 466 (4), No 1 992 275 (2) and No 1 992 291 (4).

However, the evidence filed by the opponent does not show genuine use of the trade marks for all the goods and services covered by the abovementioned 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 will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

According to case-law, when applying the abovementioned provision the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.

(14/07/2005, T-126/03, Aladin, EU:T:2005:288).

As seen above, earlier European Union trade mark No 15 099 and Spanish trade marks No 1 808 466 (4), No 1 992 275 (2) and No 1 992 291 (4) are registered for the following goods:

European Union trade mark registration No 15 099 for the word mark ‘CAMPOFRIO’

Spanish trade mark registration No 1 808 466 (4) for the word mark ‘CAMPOFRIO’

Spanish trade mark registration No 1 992 275 (2) for the figurative mark

Spanish trade mark registration No 1 992 291 (4) for the figurative mark

In the present case, the evidence proves use of the trade marks for different types of processed meat products and pizzas. Pizzas do not fall within any of the categories for which the earlier marks are registered. The various processed meat products can be considered to form objective subcategories of the opponent’s meat, poultry and game in Class 29 of the earlier marks, namely processed meat, poultry and game. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for processed meat, poultry and game in Class 29.

The examination continues in relation to earlier European Union trade mark registration No 11 031 821, for which the applicant has not requested proof of genuine use, as well as in relation to earlier European Union trade mark No 15 099 and Spanish trade marks No 1 808 466 (4), No 1 992 275 (2) and No 1 992 291 (4) for the goods for which genuine use has been proven.

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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 11 031 821, for which the applicant has not requested proof of genuine use.

The goods and services

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

Class 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats; coconut oil; flaxseed oil for culinary purposes; corn oil; sesame oil; edible oils; olives, preserved; garlic (preserved -); tahini [sesame seed paste]; ajvar [preserved peppers]; albumen for culinary purposes; weed extracts for food; toasted laver; alginates for culinary purposes; foods prepared from fish; clams [not live]; almonds, ground; aloe vera prepared for human consumption; anchovy; herrings; tuna fish; milk shakes; milk beverages, milk predominating; lobsters, not live; potato fritters; bouillon (preparations for making -); bouillon; shrimps, not live; crayfish, not live; meat; poultry, not live; game, not live; pork; meat, preserved; meat, tinned [canned (Am.)]; meat extracts; caviar; onions, preserved; mushrooms, preserved; sauerkraut; white of eggs; coconut, desiccated; cranberry sauce [compote]; apple purée; bouillon concentrates; jams; frozen fruits; soups; fruit peel; silkworm chrysalis, for human consumption; croquettes; crustaceans, not live; curd; rennet; dates; pickles; vegetable salads; ferments (milk -) for culinary purposes; fish fillets; beans, preserved; fruits, tinned [canned (Am.)]; fruit, stewed; fruit preserved in alcohol; fruit, preserved; crystallized fruits; nuts, prepared; gelatine; meat jellies; fruit jellies; sunflower oil for food; soya beans, preserved, for food; lard for food; coconut fat; fatty substances for the manufacture of edible fats; edible fats; peas, preserved; fish meal for human consumption; liver; potato flakes; bone oil, edible; fish spawn (processed -); eggs; snail eggs for consumption; powdered eggs; hummus [chickpea paste]; isinglass for food; jellies for food; ham; vegetable juices for cooking; kephir [milk beverage]; koumiss [kumiss] milk beverage; milk products; spiny lobsters, not live; prawns, not live; milk; protein milk; lecithin for culinary purposes; lentils, preserved; fruit salads; peanuts, processed; chocolate nut butter; buttercream; butter; peanut butter; coconut butter; margarine; shellfish, not live; ginger jam; marmalade; mussels, not live; tripe; blood sausage; mousses (fish -); mousses (vegetable -); colza oil for food; cream [dairy products]; whipped cream; edible birds’ nests; palm kernel oil for food; olive oil for food; oysters, not live; palm oil for food; bacon; raisins; potato chips; low-fat potato chips; liver pâté; pectin for culinary purposes; gherkins; sea-cucumbers, not live; fish, not live; fish, preserved; salted fish; fish, tinned [canned (am.)]; piccalilli; pollen prepared as foodstuff; egg nog (non-alcoholic -); charcuterie; fruit pulp; tomato purée; cheese; fruit-based snack food; fruit chips; salted meats; sausages in batter; sausages; salmon; sardines; suet for food; seeds (processed sunflower -); seeds (processed -); soup (preparations for making -); soya milk [milk substitute]; whey; tofu; tomato juice for cooking; truffles, preserved; animal marrow for food; fat-containing mixtures for bread slices; vegetable soup preparations; vegetables, cooked; vegetables, preserved; vegetables, tinned [canned (am.)]; fermented vegetable foods [kimchi]; vegetables, dried; yolk of eggs; yoghurt.

Class 30: Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice; chicory [coffee substitute]; dressings for salad; gluten additives for culinary purposes; marinades; sea water for cooking; capers; weeds [condiment]; farinaceous foods; almond confectionery; starch for food; star aniseed; aniseed; aromatic preparations for food; flavourings, other than essential oils, for beverages; flavourings, other than essential oils, for cakes; flavourings, other than essential oils; rice; rice cakes; oat-based food; oats (crushed -); husked oats; oatmeal; saffron [seasoning]; sugar; candy; waffles; high-protein cereal bars; stick liquorice [confectionery]; cocoa-based beverages; coffee-based beverages; chocolate-based beverages; tea-based beverages; bicarbonate of soda for cooking purposes [baking soda]; rusks; sandwiches; pralines; buns; peanut confectionery; cocoa; cocoa products; coffee; coffee flavorings [flavourings]; vegetal preparations for use as coffee substitutes; coffee (unroasted -); cinnamon [spice]; sweetmeats [candy]; caramels [candy]; meat pies; meat tenderizers, for household purposes; barley meal; barley (crushed -); husked barley; cereal preparations; beer vinegar; chocolate; chow-chow [condiment]; chutneys [condiments]; cloves [spice]; noodle-based prepared meals; condiments; coulis (fruit -) [sauces]; custard; cream of tartar for cooking purposes; cream of tartar for culinary purposes; turmeric for food; curry [spice]; couscous [semolina]; sweeteners (natural -); pasties; essences for foodstuffs, except etheric essences and essential oils; spaghetti; spices; binding agents for ice cream [edible ices]; sausage binding materials; thickening agents for cooking foodstuffs; malt extract for food; leaven; ferments for pastes; vermicelli [noodles]; bean meal; biscuits; petit-beurre biscuits; crackers; wheat germ for human consumption; glucose for culinary purposes; gluten prepared as foodstuff; chewing gum; groats for human food; halvah; cheeseburgers [sandwiches]; hominy; flour; edible ices; ice cream; ice for refreshment; ice, natural or artificial; garden herbs, preserved [seasonings]; oat flakes; chips [cereal products]; maize flakes; infusions, not medicinal; royal jelly; golden syrup; ginger [spice]; meat gravies; ketchup [sauce]; cocoa beverages with milk; coffee beverages with milk; chocolate beverages with milk; yeast; macaroons [pastry]; macaroni; maize flour; maize, milled; maize, roasted; malt biscuits; malt for human consumption; maltose; pastry; mayonnaise; marzipan; molasses for food; peppermint sweets; mint for confectionery; honey; flour-milling products; mustard; mustard meal; mousses (chocolate -); mousses (dessert -) [confectionery]; muesli; whipped cream (preparations for stiffening -); nutmegs; popcorn; bread; unleavened bread; gingerbread; breadcrumbs; bread rolls; pancakes; gruel, with a milk base, for food; almond paste; fondants [confectionery]; jellies (fruit -) [confectionery]; pasta; cakes; petits fours [cakes]; pastilles [confectionery]; potato flour for food; relish [condiment]; pesto [sauce]; peppers [seasonings]; pepper; allspice; pizzas; baking powder; powders for ice cream; cake powder; ham glaze; frosting [icing] (cake -); confectionery; confectionery for decorating Christmas trees; cookies; pastries; bee glue; puddings; quiches; ravioli; rice-based snack food; cereal-based snack food; liquorice [confectionery]; spring rolls; sago; celery salt; cooking salt; salt for preserving foodstuffs; soya sauce; tomato sauce; sauces [condiments]; seasonings; flaxseed for human consumption; semolina; hominy grits; sherbets [ices]; soya flour; paste (soya bean -) [condiment]; artificial coffee; sushi; tabbouleh; tacos; ribbon vermicelli; tapioca; tapioca flour for food; tarts; pies; tea; iced tea; tortillas; wheat flour; vanilla [flavoring] flavouring; vanillin [vanilla substitute]; vinegar; yoghurt (frozen -) [confectionery ices]…

Class 35: Advertising; business management; business administration; office functions; procurement services for others [purchasing goods and services for other businesses]; updating of advertising material; employment agencies; import-export agencies; commercial information agencies; advertising agencies; rental of vending machines; rental of advertising space; rental of photocopying machines; office machines and equipment rental; publicity material rental; rental of advertising time on communication media; cost price analysis; management (advisory services for business -); business management assistance; data search in computer files for others; marketing research; sponsorship search; business research; compilation of information into computer databases; layout services for advertising purposes; news clipping services; business management consultancy; personnel management consultancy; business organization consultancy; business management and organization consultancy; business consultancy (professional -); telephone answering for unavailable subscribers; publicity columns preparation; typing; shop window dressing; demonstration of goods; dissemination of advertising matter; distribution of samples; accounts (drawing up of statements of -); shorthand; marketing studies; efficiency experts; invoicing; organization of trade fairs for commercial or advertising purposes; business management of hotels; commercial administration of the licensing of the goods and services of others; file management (computerized -); business inquiries; commercial or industrial management assistance; business information; consumers (commercial information and advice for -) [consumer advice shop]; business investigations; marketing; modelling for advertising or sales promotion; payroll preparation; fashion shows for promotional purposes (organization of -); organization of exhibitions for commercial or advertising purposes; price comparison services; presentation of goods on communication media, for retail purposes; economic forecasting; production of advertising films; sales promotion for others; publication of publicity texts; publicity; on-line advertising on a computer network; outdoor advertising; direct mail advertising; advertising by mail order; radio commercials; television commercials; compilation of statistics; writing of publicity texts; public relations; business management of performing artists; document reproduction; relocation services for businesses; secretarial services; personnel recruitment; photocopying services; business management of sports people; telemarketing services; systemization of information into computer databases; opinion polling; outsourcing services [business assistance]; arranging newspaper subscriptions for others; arranging subscriptions to telecommunication services for others; accounting; psychological testing for the selection of personnel; administrative processing of purchase orders; transcription; word processing; tax preparation; business appraisals; auctioneering; auditing; promotion and publicity services; business management; business administration; office functions; wholesaling and commercial retailing, including via global computer communications networks, of foodstuffs of all kinds; import and export services; franchises, namely consultancy and assistance in the management, organisation and promotion of business relating to commercial or industrial business management assistance.

After a limitation to the list of goods and services requested by the applicant on 23/10/2015 and accepted by the Office, the contested goods and services are the following:

Class 33: Wine; wine punch; beverages containing wine [spritzers]; spirits [beverages]; wine coolers [drinks]; all the aforementioned goods with the exception of Rioja wines.

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

The term ‘including’, 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.

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

Contested goods in Class 29

The contested edible oils; olives, preserved; pickles (listed twice in the applicant’s list of goods and services) are included in the opponent’s list of goods and services. Therefore, they are identical.

The contested extra virgin olive oil; olive products are included in the broad category of, or overlap with, the opponent’s edible oils. Therefore, they are identical.

The contested olive paste; olive pâtés; vegetable pate; vegetable-based products, included in this class; tapenades; preserves, pickles; goods preserved in oil are included in the broad categories of, or overlap with, the opponent’s preserved and cooked vegetables. Therefore, they are identical.

Contested goods in Class 33

The contested wine; all the aforementioned goods with the exception of Rioja wines and the opponent’s vinegar in Class 30 have certain things in common, since they are of a very similar nature and target the same consumers. Therefore, these goods are considered similar to a low degree.

The contested wine punch; spirits [beverages]; beverages containing wine [spritzers]; wine coolers [drinks]; all the aforementioned goods with the exception of Rioja wines are spirit drinks or pre-mixed alcoholic beverages containing wine. These goods are not sufficiently related to any of the opponent’s goods and services. The mere fact that these contested goods and the opponent’s goods in Classes 29 and 30 are part of the food and beverages industry is not necessarily sufficient for a finding of similarity between them, as this does not in itself lead consumers to think that responsibility for the production of the conflicting goods lies with the same undertaking. The goods have different commercial origins, natures, purposes and methods of use.

These goods are also not similar to the opponent’s wholesaling and commercial retailing, including via global computer communications networks, of foodstuffs of all kinds in Class 35. Apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs. The opponent’s services cover different forms of services exclusively consisting of activities around the sale of goods, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of the contested goods. Furthermore, the method of use of these goods and services is different. They are neither in competition nor complementary. Similarity between services relating to the sale of specific goods covered by one mark and specific goods covered by the other mark can be found only where the goods offered for sale and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case, since the goods at issue are not identical.

These contested goods are even more different from the opponent’s remaining services in Class 35, which are generally advertising and promotional services and business management, administration and clerical services. These services consist of providing other businesses with assistance in the sale of their goods and services by promoting their launch and sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. They also comprise services rendered by specialised business consultants, who gather information and provide tools and expertise to enable their customers to carry out their business and to acquire, develop and expand market share. These services involve activities such as business research and analysis and updating, searching and maintaining business information on databases, etc. All the abovementioned services are rendered by people or organisations to assist with the running, management and business affairs of commercial undertakings or deliver promotional and marketing services by undertaking communications to the public.

Consequently, although the opponent’s services may be provided to companies that manufacture the contested goods (e.g. these goods may appear in advertisements), this is insufficient to find a similarity between these goods and services. Their natures and intended purposes are clearly different. Furthermore, they are neither in competition with nor complementary to each other. In addition, the abovementioned contested goods and the opponent’s services in Class 35 will not have the same providers, since the contested services require knowledge that is fundamentally different from the knowledge necessary to manufacture the contested goods.

Considering all of the above, it is concluded that the contested wine punch; spirits [beverages]; beverages containing wine [spritzers]; wine coolers [drinks]; all the aforementioned goods with the exception of Rioja wines are dissimilar to all the opponent’s goods and services in Classes 29, 30 and 35.

Contested services in Class 35

The contested organization of events, exhibitions, fairs and shows for commercial, promotional and advertising purposes are either the same as, or include as broader categories, the opponent’s organization of trade fairs for commercial or advertising purposes; organization of exhibitions for commercial or advertising purposes. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested retailing, wholesaling and internet sale of wine, oil and all goods derived therefrom; retailing in relation to wine and oil; wholesaling in relation to wine and oil are related to the opponent’s wholesaling and commercial retailing, including via global computer communications networks, of foodstuffs of all kinds. The services at issue have the same nature since all of them are different forms of services exclusively consisting of activities related to the sale of goods, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use. Furthermore, they coincide in their relevant public and distribution channels. Therefore, they are considered similar.

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 different degrees are directed partly at the public at large (e.g. in the case of foodstuffs or wines in Classes 29 and 33 or retail services in relation to such goods in Class 35) and partly at business customers with specific professional knowledge or expertise, such as companies seeking business advice and assistance in how to be successful, expand their business activities or take advantage of business opportunities (e.g. in the case of the organisation of events in Class 35). The consumers’ degree of attention is considered to vary from average (e.g. for foodstuffs) to higher than average (e.g. for the organisation of events), depending on the exact nature of the goods and services and the (potential) financial consequences for them.

The signs

Image representing the Mark

Earlier trade mark

Contested sign

The relevant territory is the European Union.

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

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The elements ‘CAMPOFRÍO’ of the earlier mark and ‘CAMPOSILIO’ in the contested sign are not meaningful in certain territories, for example in some of the countries where Italian, Spanish and Portuguese are not understood, and including the English-speaking public. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The applicant argues that the relevant public will recognise the word ‘CAMPO’ at the beginning of both signs and will perceive it as referring to ‘land, field’ and, therefore, it is weak in relation to the goods and services at issue. It considers that, for the English-speaking public, this will be due to the similarity between the word ‘CAMPO’ and the English word ‘CAMP’.

The Opposition Division notes that the English word ‘CAMP’ refers to ‘a place with temporary accommodation of huts, tents, or other structures, typically used by soldiers, refugees, or travelling people’ (information extracted from Oxford Dictionaries at https://en.oxforddictionaries.com/definition/camp). This word does not have a meaning in relation to the relevant goods and services and is, therefore, unlikely to be perceived as an independent and meaningful element at the beginning of the words ‘CAMPOFRÍO’ and ‘CAMPOSILIO’ of the marks, as the endings ‘OFRÍO’ and ‘OSILIO’ have no meanings. Therefore, it is highly unlikely that the signs would be dissected into two parts and not perceived as a whole.

Consequently, the verbal elements ‘CAMPOFRÍO’ and ‘CAMPOSILIO’ of the marks are meaningless for the relevant English-speaking part of the public; therefore, both of these words have an average degree of distinctiveness.

The word ‘SELECTION’ in the earlier mark will be understood by the relevant public as ‘the action or fact of carefully choosing someone or something as being the best or most suitable’, ‘a number of carefully chosen things’ (information extracted from Oxford Dictionaries at https://en.oxforddictionaries.com/definition/selection). In relation to the relevant goods and services, this word will be perceived as weak, since it will be perceived as an indication that the goods and services are of a superior quality selected from a variety of such goods and services. Therefore, the impact of this element in the earlier mark is limited when assessing the similarity between the marks.

Both marks are figurative marks. The figurative elements of the earlier mark will be perceived as decorative elements and may be considered of less importance than the verbal elements in the visual perception of the mark. Moreover, 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).

Neither of the marks has any element that could be considered clearly more dominant (visually eye-catching) than other elements.

It should be noted 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 and from top to bottom, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs are similar to the extent that they coincide in the sequence of letters ‘CAMPO*IO’; these letters appear in the same order in the only element of the contested sign, ‘CAMPOSILIO’, and in the first verbal element of the earlier mark, ‘CAMPOFRÍO’. However, they differ in the accent over the letter ‘I’ in the earlier mark and in some of the other letters of the verbal elements of the marks, namely the sixth and seventh letters, ‘FR’, of the earlier mark and the sixth, seventh and eighth letters, ‘SIL’, of the contested sign. Given that the differences between these words are in the middle of each word, they are more likely to go unnoticed by consumers.

The additional, second, word of the earlier mark, ‘SELECTION’, which has no counterpart in the contested sign, will play a less important role in the overall impression conveyed by the mark than the word ‘CAMPOFRÍO’ because it is weak.

The marks also differ in the stylisation of their verbal elements and in the additional figurative elements of the earlier mark, which, as seen above, have less impact on the consumer than the verbal elements of the sign.

Therefore, taking into account all the relevant factors, it is concluded that the marks are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘CAMPO*IO’, present in the contested sign’s only element, ‘CAMPOSILIO’, and in the earlier mark’s first word, ‘CAMPOFRÍO’. The pronunciation differs in the sound of some of the letters in the middle of these words, namely ‘FR’ in the earlier mark and ‘SIL’ in the contested sign.

The pronunciation also differs in the additional, second, word of the earlier mark, ‘SELECTION’, which has no counterpart in the contested sign and will be perceived as weak by the relevant public. Consumers will focus on the more distinctive verbal element of the sign, ‘CAMPOFRÍO’.

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

Conceptually, the relevant public will perceive the word ‘SELECTION’ in the earlier mark with the meaning defined above. However, owing to the fact that it is weak in relation to the relevant goods and services, its conceptual impact is limited. The first verbal element of the earlier mark and the only verbal element of the contested sign will not be perceived with any meanings. Consequently, since one of the signs (the contested sign) will not be associated with any meaning, the marks are not conceptually similar.

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

Distinctiveness of the earlier mark

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

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection for part of the goods and services. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some weak elements in the mark as stated above in section c) of this decision.

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 (recital 8 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; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The goods and services are partly identical, partly similar (to different degrees) and partly dissimilar. The earlier mark enjoys an average degree of distinctiveness per se in relation to the relevant goods and services.

The signs are visually and aurally similar to an average degree on account of the coinciding letters ‘CAMPO*IO’, present in the same order in the first verbal element of the earlier mark, ‘CAMPOFRIO’, and in the contested sign’s only element, ‘CAMPOSILIO’. These verbal elements will not be associated with any meanings and will be perceived as fanciful and fully distinctive words by the relevant English-speaking part of the public, while the second word, ‘SELECTION’, of the earlier mark has a limited degree of distinctiveness and so the relevant public will not pay much attention to it.

All the aforementioned findings lead to the conclusion that the coincidences outweigh the differences in the overall impressions produced by the marks, even for goods that are similar to only a low degree.

Article 8(1)(b) EUTMR states that, upon opposition, an EUTM application shall not be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.

Considering that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them, they may legitimately believe that the contested trade mark is a new version or a brand variation of the earlier mark. Therefore, the Opposition Division considers that there is a likelihood of confusion, including a likelihood of association, even considering that the degree of attention with regard to some of the relevant services (which are, furthermore, identical) may be higher than average. Even consumers with a higher 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).

Considering all the above, there is a likelihood of confusion for the English-speaking part of the public. 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.

In its observations, the applicant argues that the coinciding beginning ‘CAMPO’ of the marks has a low degree of distinctive character, given that it has a meaning in Italian and Spanish and that there are many trade marks that include that element for goods in Classes 29, 30 and 33. In support of its argument, the applicant submitted several website extracts (mostly from Italian websites) showing use of the word ‘CAMPO’ in relation to foodstuffs and wine.

The evidence submitted does not suffice to demonstrate that consumers in the European Union (and, in particular, the relevant English-speaking consumers, which make up the part of the public taken into account in the above assessment of likelihood of confusion) have been exposed to widespread use of, or have become accustomed to, trade marks that include the element ‘CAMPO’. Moreover, as seen above, these letters will not be identified as an independent and meaningful element in the marks at issue by the relevant English-speaking part of the public. Under these circumstances, the applicant’s claims must be set aside.

Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 11 031 821.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar (to different degrees) to the goods and services of the abovementioned earlier trade mark.

The rest of the contested goods are dissimilar to the opponent’s goods and services. 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 the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use and reputation as claimed by the opponent and in relation to identical and similar services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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

The opponent has also based its opposition on earlier European Union trade mark No 15 099 and Spanish trade marks No 1 808 466 (4), No 1 992 275 (2) and No 1 992 291 (4), for which genuine use has been proven for processed meat, poultry and game in Class 29. These goods belong to the broader categories of meat, poultry and game in Class 29, which have already been compared above with regard to earlier European Union trade mark No 11 031 821 and which were found to be dissimilar to the contested wine punch; spirits [beverages]; beverages containing wine [spritzers]; wine coolers [drinks]; all the aforementioned goods with the exception of Rioja wines in Class 33. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected. No likelihood of confusion exists with regard to those dissimilar goods.

This finding would still be valid even if the earlier trade marks were to be considered as enjoying a high degree of distinctiveness, as claimed by the opponent. Given that the dissimilarity of the goods and services cannot be overcome by the highly distinctive character of the earlier trade marks, the evidence submitted by the opponent in this respect does not alter the outcome reached above in relation to these marks.

EARLIER WELL-KNOWN MARKS – ARTICLE 8(2)(C) EUTMR IN CONJUNCTION WITH ARTICLE 8(1)(b) EUTMR

In its notice of opposition, the opponent claims to have the following well-known marks in the sense of Article 6bis of the Paris Convention for the following goods:

Earlier word mark ‘CAMPOFRIO’, well-known in Spain

Earlier figurative mark , well-known in Spain

Earlier word mark ‘CAMPOFRIO’, well-known in Spain

Earlier figurative mark , well-known in Spain

The remaining contested goods, for which the opposition is not successful under Article 8(1)(b) EUTMR, are the following:

Class 33: Wine punch; spirits [beverages]; beverages containing wine [spritzers]; wine coolers [drinks]; all the aforementioned goods with the exception of Rioja wines.

According to Article 8(2)(c) EUTMR, for the purposes of Article 8(1) EUTMR ‘earlier trade marks’ means:

trade marks which, on the date of application for registration of the EU trade mark, or, where appropriate, of the priority claimed in respect of the application for registration of the EU trade mark, are well known in a Member State in the sense in which the words ‘well known’ are used in Article 6bis of the Paris Convention.

Article 8(2)(c) EUTMR, in general, defines the earlier trade mark only ‘for the purposes of paragraph 1’ and, therefore, does not provide an independent relative ground for refusal. Therefore, the grounds for refusal and opposition are those provided by Article 8(1)(b) EUTMR.

For Article 8(2)(c) EUTMR in conjunction with Article 8(1)(b) EUTMR to be applicable, the following has to be established:

the earlier mark was well known in the relevant territory on the date when the contested EUTM application was filed and

because of identity with or similarity of the contested mark to the earlier well-known mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the relevant territory.

With regard to the second requirement, these are all the conditions that have to be fulfilled to render Article 8(1)(b) EUTMR applicable, namely identity or similarity between the conflicting signs and identity or similarity between the goods or services covered by the signs, and a consequent likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected.

The goods of the abovementioned earlier well-known marks are various foodstuffs, which have partially been compared above to the contested goods in relation to the examination of earlier European Union trade mark No 11 031 821; however, they also include prepared dishes and preserves in Class 29.

As seen above, the contested wine punch; spirits [beverages]; beverages containing wine [spritzers]; wine coolers [drinks]; all the aforementioned goods with the exception of Rioja wines in Class 33 are spirit drinks or pre-mixed alcoholic beverages containing wine. These goods are not sufficiently related to any of the opponent’s goods. The mere fact that these contested goods and the opponent’s goods in Class 29 are part of the food and beverages industry is not necessarily sufficient for a finding of similarity between them, as this does not in itself lead consumers to think that responsibility for the production of the conflicting goods lies with the same undertaking. The goods have different commercial origins, natures, purposes and methods of use. Therefore, they are dissimilar.

Consequently, one of the necessary conditions for Article 8(2)(c) EUTMR in conjunction with Article 8(1)(b) EUTMR to be applicable is not fulfilled, that is, identity or similarity between the goods and services.

The opposition must, therefore, be rejected insofar as it is based on Article 8(2)(c) EUTMR in conjunction with Article 8(1)(b) EUTMR for the abovementioned well-known marks.

REPUTATION – ARTICLE 8(5) EUTMR

According to the opponent, earlier European Union trade marks No 15 099 and No 11 031 821 and Spanish trade marks No 1 808 466 (4), No 1 992 275 (2) and No 1 992 291 (4) have a reputation in Spain for the goods in Class 29, for which each of these trade marks is registered.

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 mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

The signs

Image representing the Mark

European Union trade mark No 11 031 821

CAMPOFRIO

2), 3) European Union trade mark No 15 099 and Spanish trade mark No 1 808 466 (4)

4) Spanish trade mark No 1 992 275 (2)

5) Spanish trade mark No 1 992 291 (4)

Earlier trade marks

Contested sign

The relevant territory is the European Union in relation to earlier European Union trade marks No 15 099 and No 11 031 821 and Spain in relation to earlier Spanish trade marks No 1 808 466 (4), No 1 992 275 (2) and No 1 992 291 (4).

However, as reputation is claimed only in Spain, the analysis below focuses on the public in Spain.

The verbal element ‘CAMPOFRÍO’, which constitutes the entirety of or is present in the earlier marks, does not exist in common parlance in Spanish. Nevertheless, it is reasonable to assume that the relevant public will perceive the element ‘CAMPOFRÍO’ as the sum of its parts, splitting it into the elements ‘CAMPO’ and ‘FRÍO’, because it will perceive both elements as meaningful.

In particular, the element ‘CAMPO’, included at the beginning of the abovementioned verbal element, will be perceived by the relevant Spanish-speaking public as ‘extensive land out of town’, ‘working land’, ‘crops, trees and other cultures’ (see, for example, Real Academia Española at http://www.rae.es/). In relation to the relevant goods in Class 29, which are generally foodstuffs, this element will be perceived as alluding to the place of origin of the goods.

The word ‘FRÍO’ in ‘CAMPOFRÍO’ is a Spanish word that refers to something that ‘has a temperature below the ordinary or the convenient one’ (see, for example, Real Academia Española at http://www.rae.es/). This word could also be perceived as allusive of the temperature at which the particular foodstuffs in Class 29 are conserved.

The combination ‘CAMPOFRÍO’ is a distinctive and invented word with no straightforward meaning as a whole.

The word ‘SELECTION’ in earlier mark 1) will be understood by the relevant Spanish-speaking public with the same meaning as in English, because it is very similar to its Spanish equivalent, ‘selección’. In relation to the relevant goods, this word will be perceived as weak, indicating that the goods are of a superior quality among a variety of goods. Therefore, the impact of this element in the earlier mark is limited when assessing the similarity between the marks.

As regards the verbal element of the contested sign, ‘CAMPOSILIO’, although the word ‘CAMPO’ exists as such in Spanish and has the abovementioned meaning, the element ‘SILIO’ has no meaning. Therefore, the sign will not be dissected into two parts but will be perceived as a whole. The word ‘CAMPOSILIO’ is meaningless for the relevant public and, therefore, has an average degree of distinctiveness.

The figurative elements of earlier marks 1), 4) and 5) will be perceived as decorative elements and may be considered of less importance than the verbal elements in the visual perception of the marks. Moreover, as seen above, 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.

None of the marks has any element that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs are similar to the extent that they coincide in the sequence of letters ‘CAMPO*IO’; these letters appear in the same order in the only element of the contested sign, ‘CAMPOSILIO’, and in the verbal element ‘CAMPOFRÍO’, which is the only verbal element of earlier marks 2), 3), 4) and 5) and the first verbal element of earlier mark 1). However, they differ in some of the letters of these elements, namely the sixth and seventh letters, ‘FR’, of the earlier marks and the sixth, seventh and eighth letters, ‘SIL’, in the contested sign. Given that the differences between these words are in the middle of each word, they are more likely to go unnoticed by consumers.

The additional, second, word of earlier mark 1), ‘SELECTION’, which has no counterpart in the contested sign, will play a less important role in the overall impression conveyed by that mark than the word ‘CAMPOFRÍO’ because it is weak, whereas the word ‘CAMPOFRÍO’ in that sign does not have a straightforward meaning as a whole.

The marks also differ in the stylisation of the verbal element of the contested sign and in the stylisation and additional figurative elements of earlier marks 1), 4) and 5), which, as seen above, have less impact on the consumer than the verbal elements of the sign.

Therefore, taking into account all the relevant factors, it is concluded that the marks are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘CAMPO*IO’, present in the contested sign’s only element, ‘CAMPOSILIO’, and in the earlier marks’ word ‘CAMPOFRÍO’. The pronunciation differs in the sound of some of the letters in the middle of these words, namely ‘FR’ in the earlier marks and ‘SIL’ in the contested sign.

With regard to earlier mark 1), the pronunciation also differs in the additional second word of this mark, ‘SELECTION’, which will be perceived as weak by the relevant public. Consumers will focus on the more distinctive verbal element of the sign, ‘CAMPOFRÍO’.

Considering all the above, the signs are aurally similar to an average degree.

Conceptually, the verbal element ‘CAMPOFRÍO’ of the earlier marks will be perceived as a combination of two meaningful elements, as noted above, both of which are allusive of characteristics of the goods at issue. The word ‘SELECTION’ in earlier mark 1) will be perceived with the meaning defined above. However, owing to the fact that it is weak in relation to the relevant goods and services, its conceptual impact is limited. The contested sign does not have a meaning. Consequently, since one of the signs (the contested sign) will not be associated with any meaning, the marks are not conceptually similar.

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

Reputation of the earlier trade marks

According to the opponent, earlier European Union trade marks No 15 099 and No 11 031 821 and Spanish trade marks No 1 808 466 (4), No 1 992 275 (2) and No 1 992 291 (4) have 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 contested trade mark was filed on 17/11/2014. Therefore, the opponent was required to prove that the trade marks 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 and, moreover, has proven genuine use as regards those marks subject to the use obligation. Consequently, the relevant goods are the following:

European Union trade mark registration No 11 031 821

European Union trade mark registration No 15 099 and Spanish trade mark registrations No 1 808 466 (4), No 1 992 275 (2) and No 1 992 291 (4)

Class 29: Processed meat, poultry and game.

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.

The evidence submitted in support of the opponent’s claim has already been listed above, that is, as the first batch of documents of 16/06/2015, which was received within the time limit for substantiating the opposition and consists of eight annexes.

The Opposition Division notes that the evidence submitted by the opponent during the substantiation period is in the form of internally prepared documents of an unofficial character (i.e. editable electronic documents and a compilation of articles that does not demonstrate the actual publication of these texts in print or online media) or originates directly from the opponent (i.e. the opponent’s annual reports and a magazine issued by the opponent for its employees). Nevertheless, the Opposition Division accepts that the documents submitted represent publicly available information and reproduce statements made in public and can, therefore, be considered reliable and be given appropriate weight and probative value.

On the basis of the documents submitted, the Opposition Division concludes that the earlier trade marks have a certain degree of reputation in Spain for processed meat, poultry and game in Class 29.

Although the opponent has not provided direct independent quantitative evidence of market share or investment figures in promotional activities of the signs at issue, the numerous references in the articles to the scale of its activities and the well-known character of the marks give sufficient indirect indications of the awareness of the relevant consumers of the opponent’s trade marks in relation to processed meat products.

The documents demonstrate that the ‘CAMPOFRÍO’ brand has a national impact in Spain, as reflected in the press cuttings referring to the opponent’s activities and its advertising campaigns. The majority of the evidence is formed of articles from various media, which show that the earlier marks have been subject to long-standing and intensive use in Spain in relation to processed meat products and that it is generally known in the relevant market. Some articles refer to information about the opponent and its reputation as a company, but many articles also refer to the presence of the earlier marks in various trade mark charts prepared by Spanish newspapers or independent consultancy firms. The opponent’s magazines make references to sponsorships carried out by the opponent in support of the Spanish national football team, European competition matches, etc., and to high levels of trade mark recognition.

The documents suggest that the signs have become well-known as a result of the continuous activities of the opponent and the extent of these activities. The financial figures and statistical data provided by the opponent for 2007-2013 or extracted from its annual reports are indirect indications of the number of consumers that can be expected to have encountered the earlier signs. These figures are partly supported by the invoices and the information in the articles discussed above, which give independent information on the scale of the opponent’s activities.

The abovementioned evidence indicates that the earlier trade marks have been used intensively and for a substantial period of time. The scope of the opponent’s activities suggests that the trade marks have a consolidated position in the market. Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence indicates that the earlier trade marks enjoy a certain degree of recognition among the relevant public, which leads to the conclusion that they enjoy some degree of reputation within the meaning of Article 8(5) EUTMR for some of the relevant goods, namely for processed meat, poultry and game in Class 29. Whether the degree of recognition is sufficient for Article 8(5) EUTMR to be applicable depends on other factors relevant under Article 8(5) EUTMR, such as the degree of similarity between the signs, the inherent characteristics of the earlier trade marks, the type of goods and services in question, the relevant consumers, etc.

The ‘link’ between the signs

As seen above, the earlier marks are reputed and the signs are similar to some extent. 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 establishment of such a link, while triggered by similarity (or identity) between the signs, requires that the relevant sections of the public for each of the goods and services covered by the trade marks in dispute are the same or overlap to some extent.

According to the Court of Justice of the European Union,

It is therefore conceivable that the relevant section of the public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark was registered and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks.

(27/11/2008, C-252/07, Intel, EU:C:2008:655, § 48.)

The Court of Justice has also noted,

… that certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which those marks were registered. In such a case, it is possible that the relevant section of the public as regards the goods or services for which the later mark is registered will make a connection between the conflicting marks, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered.

(27/11/2008, C-252/07, Intel, EU:C:2008:655, § 51 and 52.)

The goods of the earlier trade marks for which reputation has been proven are the following:

Class 29: Processed meat, poultry and game.

The contested goods for which the opposition is not successful under Article 8(1)(b) EUTMR are the following:

Class 33: Wine punch; spirits [beverages]; beverages containing wine [spritzers]; wine coolers [drinks]; all the aforementioned goods with the exception of Rioja wines.

It is possible that the relevant section of the public for the goods covered by the conflicting marks is the same or overlaps to some extent. However, this circumstance does not mean that a link would necessarily be established in the consumer’s mind, as the contested goods are not sufficiently related to the opponent’s goods. For the purposes of assessing whether there is a link between the marks at issue, it is therefore necessary to take into account the similarity between the signs and the strength of the earlier marks’ reputation. The earlier marks enjoy a certain degree of reputation for processed meat, poultry and game in Class 29. The goods in conflict are of different natures and, although they are intended for human consumption, this fact is not sufficient for establishing a link between the marks. They satisfy different needs and are produced by different companies. A person seeking to buy alcoholic beverages is unlikely to call to mind the opponent’s brand, which is reputed for processed meat, poultry and game. These sectors have little in common and require different skills, infrastructures and facilities. Therefore, consumers are unlikely to form a link between the two.

The marks are similar due to their coinciding letters ‘CAMPO*IO’. While this similarity may be sufficient to trigger a link between the marks in relation to identical goods and services or goods and services that are similar to some degree, this similarity has a weaker effect in relation to the dissimilar goods mentioned above. Moreover, in relation to the relevant goods, the coinciding letters ‘CAMPO’ will be associated with a meaning in the earlier marks, alluding to characteristics of the goods in Class 29, while they will not be perceived as an independent and meaningful element in the contested sign because the remaining letters of that sign, ‘SILIO’, do not convey any meaning. For the coinciding letters to lead to a link being formed between such dissimilar goods, the reputed marks would have to have a very strong reputation. Although the earlier trade marks enjoy a reputation for processed meat, poultry and game, the degree of the earlier marks’ reputation demonstrated by the opponent does not imply that it is of such a strength that it could produce effects beyond the relevant market sector and trigger a link between signs in different areas, such as the abovementioned sectors. It is unlikely that, when intending to purchase the contested goods in Class 33 mentioned above, the relevant public would link them to trade marks that have a reputation for meat. Therefore, it is unlikely that the contested mark would remind the relevant consumer of the earlier marks in relation to wine punch; spirits [beverages]; beverages containing wine [spritzers]; wine coolers [drinks]; all the aforementioned goods with the exception of Rioja wines in Class 33.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them in relation to processed meat, poultry and game in Class 29 and wine punch; spirits [beverages]; beverages containing wine [spritzers]; wine coolers [drinks]; all the aforementioned goods with the exception of Rioja wines in Class 33. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected in relation to these goods.

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

Begoña URIARTE VALIENTE

Boyana NAYDENOVA

Pedro JURADO MONTEJANO

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.

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