OPPOSITION No B 1 756 546

LU Polska S.A., Redutowa 9/23, 01 – 103 Warszawa, Poland (opponent), represented by Gevers, Brussels Airport Business Park, Holidaystraat, 5, 1831 Diegem, Belgium  (professional representative)

a g a i n s t

MO.CA S.p.A., Via Modena, 22, 47853 Coriano (RN), Italia (applicant), represented by Ufficio Brevetti Pedrini & Benedetti, Via Cardinale Gugliemo Massaia, 12, 61122 Pesaro, Italy (professional representative).

On 13/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 1 756 546 is upheld for all the contested goods, namely 

Class 30: Treacle; yeast, baking-powder; coffee, cocoa, sugar, flour, ice creams, salt; all of the aforementioned goods exclusively being semi-processed goods for industry, none of them intended for large distribution, with the explicit exclusion of finished products intended for the final consumer and with the explicit exclusion of biscuits, pastries, tarts and snacks.

2.        European Union trade mark application No 9 118 316 is rejected for all the contested goods. It may proceed for the remaining services.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 9 118 316, namely against all the goods in Class 30. The opposition is based on Polish trade mark registration No 204 299. The opponent invoked Article 8(1)(b), 8(5) and 8(2)(c) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

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.

1. The signs

DELICJE
Earlier trade mark	Contested sign

The relevant territory is Poland.

Visually, the signs are similar to the extent that they coincide in the letters ‘D-E-L-I-*-*-*-’. However, they differ in the letters ‘C-J-E’ of the earlier mark and in the letters ‘Z-I-A’ and the figurative element, the stylisation and colour of the contested sign.

Aurally, the earlier mark will be pronounced as ‘DE-LI-CJE’ and the contested sign as ‘DE-LI-ZJA’ (it is considered that even if the relevant public will recognise a letter D in the contested sign, this will not be pronounced as it is integrated part of the figurative element and the first letter of the word ‘DELIZIA’). The word ‘DELICJE’ and ‘DELIZIA’ have the same length and number of syllables, and, therefore, the same rhythm and intonation. The pronunciation of the signs coincides in the sound of the syllables ‘DE-LI’ and in the sound of the letter ‘J’ of the earlier mark and ‘I’ of the contested sign. The letter ‘Z’ of the contested sign and ‘C’ of the earlier mark have a rather similar sound in Polish. Furthermore, the pronunciation differs in the sound of the letter ‘E’ of the earlier mark and ‘A’ of the contested sign.

Conceptually, the earlier mark ‘DELICJE’ will be perceived as the plural of the word ‘delicja’ (delicacy). The word ‘DELIZIA’ of the contested sign does not exist as such in Polish, however, it is likely that the relevant public will consider that the word ‘DELIZIA’ is a misspelling of the correct word ‘delicja’. For the part of the public that will recognise the letter ‘D’ in the figurative element of the contested sign, it is considered that this will be perceived as the first letter of the word ‘DELIZIA’. Since the signs will be associated with a similar meaning, the signs are conceptually similar.

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

2. Reputation of the earlier trade mark

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

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 19/05/2010. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Poland prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely

Class 30:        Coffee, tea, cocoa, pies sweet or salty, biscuits sweet or salty, cookies, cereal products, cereals, ready meals, partly or wholly made of bakery products, bread, rusks, biscuits sweet or salted, wafers waffles pancakes, these are all mere products and / or with the glaze and / or filled and / or flavoured, salty or sweet snacks biscuits, bakery products, cakes, thin pastry, confectionery, chocolate, chocolate products, candies, sweets, cocoa, chocolate-based beverages and cocoa, ice cream, frozen creams sweet sauces, all the above products with or without the aroma or containing fruit.

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

On 23/03/2011 the opponent submitted the following evidence:

• Enclosure 1: A copy of an extract from the web site of the opponent showing the range of DELICJE products (biscuits).

• Enclosure 2: A copy of a printout of the 2007 Media Plan for ‘DELICJE’ done by the media agency Mediacom. According to the printout the mark DELICJE appears to be advertised throughout the year of 2007 through Radio spots, TV spots, advertisements in the press as well as through the Internet.

• Enclosure 3: A copy of a printout of the 2009 Media Plan for DELICJE done by the media agency Starcom. On the printout the mark DELICJE appears to be advertised in Poland through TV spots.

• Enclosure 4: A copy of a printout of the 2010 Media Plan for DELICJE done by the media agency Starcom.
• Enclosure 5: A copy of an extract of a survey carried out by Millward Brown, a research agency, concerning the Brand Awareness of the mark DELICJE in Poland between 2007 and 2010 with the methodology. According to this survey the ‘aided brand awarness’ of the mark DELICJE in Poland level of 07% to 96,5% during the relevant period. The relevant goods are confectionery products and in particular biscuits.

• Enclosure 6: A copy of the history of the mark DELICJE in Poland. The mark appears to be used for biscuits.

• Enclosure 7: A copy of the sale volume, of DELICJE in Poland (according to AC Nielsen) from 2005 to 2009.

• Enclosure 8: A copy of the results of a Polish market research called ‘BrandAsset Valuator 2010’ ordered by BAV Consulting and conducted by Millward Brown SMG/KRC and dated 26/10/2010. The results show that DELICJE is among the top 3 Polish brands among 95 different categories.

• Enclosure 9: copy of a slide from BAV Consulting on DELICJE that shows that the brand is the strongest trade mark within biscuits frame of reference in Poland.

• Enclosure 10: Copy of some decisions rendered in Poland by national Courts in which it is mentioned that the mark DELICJE has a reputation in Poland for confectionery products, in particular biscuits.

• Enclosure 11: A copy of a declaration of the Polish Association of Branded Goods Manufacturer stating that the mark DELICJE has a grounded position among the Polish consumers.

• Enclosure 12: A copy of an article from the web site tradepress.com.pl dated 09/04/2006, indicating that the product ‘MINI DELICJE’ has been elected by the consumers ‘Product of the year 2006’ among biscuits, wafers and bars, based on the study initiated by TNS OBOP (member of the TNS group which is one of the world’s leading and marketing group).

• Enclosure 13: Award granted by ‘Product of the Year Poland Limited Liability Company’ for DELICJE which has been elected by the consumers as product of the year 2008 among sweet products, based on the study initiated by TNS OBOP.

• Enclosure 14: A copy of a certificate given by the company Superbrands Ltd. Attesting that DELICJE has been awarded ‘Superbrand in Poland 2004’.

• Enclosure 15: A CD ROM including several TV Spots.

• Enclosure 16: A copy of the Nielsen Retail Panel Index Report on sweet products for the period 12/2007-11/2010 in Poland. According to the report the mark DELICJE has one of the best values as a brand.

On the basis of the above the Opposition Division concludes that the earlier trade mark has a reputation in Poland.

It is clear from the evidence that the earlier trade mark has been subject to long-standing and intensive use and is generally known in the relevant market, where it enjoys a consolidated position among the leading brands, as has been attested by diverse independent sources. This is clear, for example from the survey, the sale volume, the slide from BAV Consulting, the market research, the Nielsen Retail Panel Index Report that show that the mark enjoys a high degree of recognition among the relevant public.

However, the evidence does not succeed in establishing that the trade mark has a reputation for all the goods on which the opposition is based and for which reputation has been claimed. The evidence mainly relates to biscuits sweet, cookies, these are all mere products and / or with the glaze and / or filled and / or flavoured, sweet snacks biscuits, all the above products with or without the aroma or containing fruit whereas there is no or little reference to the remaining goods. This is clear, for example, from the survey, the history, the spots, slide from BAV Consulting, where only the former are mentioned or appeared.

3. The ‘link’ between the signs

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

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

∙        the degree of similarity between the signs;

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

∙        the strength of the earlier mark’s reputation;

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

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

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

The visual, aural and conceptual similarities between the signs are undeniable and will be perceived immediately by consumers. The signs only differ in  the letters ‘C-J-E’ of the earlier mark and in the letters ‘Z-I-A’ and the figurative element, the stylisation and colour of the contested sign. The letter ‘J’ of the earlier mark and ‘I’ of the contested sign have the same sound in Polish. Furthermore, the letter ‘Z’ of the contested sign and ‘C’ of the earlier mark have a rather similar sound in Polish.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

The earlier mark possesses reputation for biscuits sweet, cookies, these are all mere products and / or with the glaze and / or filled and / or flavoured, sweet snacks biscuits, all the above products with or without the aroma or containing fruit. The contested sign seeks protection for treacle; yeast, baking-powder; coffee, cocoa, sugar, flour, ice creams, salt; all of the aforementioned goods exclusively being semi-processed goods for industry, none of them intended for large distribution, with the explicit exclusion of finished products intended for the final consumer and with the explicit exclusion of biscuits, pastries, tarts and snacks.

In the view of the Opposition Division, there is a clear connection between the goods at hand since the goods are most commonly found in the same shops (for example in grocery stores) and they share the same end users. It is not inconceivable that the consumer shopping for groceries in a supermarket would purchase these goods at the same time, and, thereby, would be confronted with the two trade marks at the same time.

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

4. Risk of injury

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

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

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

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

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

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

The opponent claims that the use of the contested sign would take unfair advantage of the distinctive character or reputation of the earlier mark ‘DELICJE’ or would be detrimental to it, since the trade mark DELICJE may be easily identified or recognised by the average consumer in Poland.  The earlier trade mark DELICJE is very well-known mark in Poland.  The use of a similar trade mark will be associated to the goods offered by the opponent and, thus will be detrimental to the distinctive character and to the reputation of the earlier mark. As the trade mark   DELICJE is so familiar to the general public regarding the goods concerned, it is very likely that it associates a very similar mark to the earlier mark and that may be detrimental to the distinctive character and high reputation of the earlier mark.

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

Class 30:        Treacle; yeast, baking-powder; coffee, cocoa, sugar, flour, ice creams, salt; all of the aforementioned goods exclusively being semi-processed goods for industry, none of them intended for large distribution, with the explicit exclusion of finished products intended for the final consumer and with the explicit exclusion of biscuits, pastries, tarts and snacks.

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

Class 30:        Biscuits sweet, cookies, these are all mere products and / or with the glaze and / or filled and / or flavoured, sweet snacks biscuits, all the above products with or without the aroma or containing fruit.

Unfair advantage (free-riding)

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

The opponent bases its claim on the following:

The use of the trademark DELIZIA will take unfair advantage of the earlier mark in the territory concerned. Indeed, the opponent has developed through numerous years a constant image of high quality confectionery. Therefore, the use of the contested application for the goods applied for will take unfair advantage of the reputation of the earlier trademark. Indeed, the use of a resembling trademark for such goods will affect the distinctiveness and reputation of the earlier mark because there is a possibility that the consumers in the territory concerned will perceive such products as emanating under the control of the opponent. ´the u se of the contested sign DELIZIA for goods that are not under the control of the opponent may have a negative impact on the reputation acquired. It will affect the image of high quality that the opponent has developed over the years, the applicant would take unfair advantage of the image and goodwill built up by the opponent over the years and in which he invested huge amounts of money in order to obtain and maintain such an image.

Therefore, it would  be quite unfair to allow the applicant with his mark DELIZIA to ride along on the reputation and goodwill of the DELICJE trademark, without him having to undertake any investments to achieve a similar reputation. The benefits enjoyed by the applicant would not be based on his own merits but on the high reputation of the earlier mark in the territory concerned. Therefore, the applicant’s mark would potentially take unfair advantage of the earlier mark DELICJE given the proximity  between the goods.

As seen above, the signs are similar and there is a clear relationship between the reputed mark DELICJE for  biscuits sweet, cookies, these are all mere products and / or with the glaze and / or filled and / or flavoured, sweet snacks biscuits, all the above products with or without the aroma or containing fruit and the contested sign seeking registration for treacle; yeast, baking-powder; coffee, cocoa, sugar, flour, ice creams, salt; all of the aforementioned goods exclusively being semi-processed goods for industry, none of them intended for large distribution, with the explicit exclusion of finished products intended for the final consumer and with the explicit exclusion of biscuits, pastries, tarts and snacks.

Considering the similarity of the signs and the relationship between the goods at issue, it seems inevitable that the image of the earlier mark and the characteristics that it projects (reputation for quality biscuits), would be transferred to the applicant’s goods if they were marketed under the contested sign.  In this way, the contested sign would receive an unfair ‘boost’ as a result of being linked with the opponent’s mark in the minds of consumers in Poland. The considerable reputation of the earlier mark makes it highly likely that consumers will establish an association between the earlier mark and the contested sign. Consequently, there is a high risk that the contested sign, will benefit from the reputation of earlier mark and the positive image that it conveys.  

According to the Court of Justice of the European Union

… as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, insofar as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to the average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect.

(27/11/2008, C-252/07, Intel, EU:C:2008:655, § 36.)

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

Other types of injury

The opponent also argues that use of the contested trade mark would be detrimental to the distinctive character and repute of the earlier trade mark.

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark. It follows that there is no need to examine whether other types also apply.

5. Conclusion

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

Given that the opposition is entirely successful under Article 8(5) EUTMR it is not necessary to examine the remaining grounds on which the opposition was based.

COSTS

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

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

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

The Opposition Division

Pedro JURADO MONTEJANO

Francesca CANGERI SERRANO

María Clara IBÁÑEZ FIORILLO

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

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