EST 1946 ΓΙΩΡΓΟΣ ΧΑΤΖΗΦΩΤΙΟΥ CHOCOLATES | Decision 2635939

OPPOSITION No B 2 635 939

S. Hatzifotiou Abee-Patisseries-Bakeries (Σ. Χατζηφωτίου Αβεε Ζαχαροπλαστεία – Αρτοποιία), 24th Klm. Thessaloniki-N. Moudania, 57500 Kato Sxolari, Municipality of Micra, Greece (opponent), represented by Rigas Giovannopoulos, 47, Polytechneiou Str., 54625 Thessaloniki, Greece (professional representative)

a g a i n s t

Γεώργιος Χατζηφωτίου, Ι. Μεταξά 12 Γ Πανόραμα Θεσσαλονίκης, Θεσσαλονίκη, Greece (applicant), represented by Theodoros Gousios, 43 Stadiou street, 10559 Athens, Greece (professional representative).

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

DECISION:

1. Opposition No B 2 635 939 is partially upheld, namely for the following contested goods and services:

Class 30: Pretzels; savory pastries; sandwiches; maize, roasted; flapjacks; crumble; chips [cereal products]; canapes; rice cakes; mincemeat pies; quiches; quiches; crackers made of prepared cereals; crackers filled with cheese; crackers flavoured with herbs; prawn crackers; crackers flavoured with meat; crackers flavoured with vegetables; crackers flavoured with spices; crackers flavoured with cheese; rice crackers; meat pies; snack foods prepared from maize; snack foods consisting principally of extruded cereals; cereal-based snack food; cereal-based snack food; snack food products made from rice flour; snack foods made from wheat; snack foods made of whole wheat; rice-based snack food; snack foods made from wheat; cereal-based snack food; snack foods made from corn; filled baguettes; rice biscuits; pies; candy coated popcorn; caramel coated popcorn; flavoured popcorn; caramel coated popcorn with candied nuts; sandwiches; wrap [sandwich]; toasted sandwiches; filled bread rolls; filled bread rolls; flavorings and seasonings; coffee flavorings [flavourings]; flavourings for foods; essences for food [other than essential oils]; aromatic preparations for pastries; flavourings, other than essential oils, for cakes; aromatic preparations for food; aromatic preparations for ice-creams; aromatic preparations for cakes; aromatic preparations for candies; essences for foodstuffs, except etheric essences and essential oils; flavourings made from fruits; flavourings made from fruits [other than essential oils]; food flavorings, other than essential oils; flavourings for cakes; flavorings and seasonings; flavoured vinegar; vanilla; vanilla flavorings; vanillin [vanilla substitute]; culinary herbs; garden herbs, preserved [seasonings]; edible essences for foodstuffs [other than etheric substances and essential oils]; alimentary seasonings; sauce [edible]; cloves [spice]; clove powder [spice]; aniseed; glucose for culinary purposes; alimentary seasonings; extracts of cocoa for use as flavours in foodstuffs; extracts used as flavoring [not essential oils]; cinnamon [spice]; cinnamon [spice]; turmeric; marshmallow topping; custard mixes; mint for confectionery; seasoning mixes; sauces for ice cream; flavourings, other than essential oils, for cakes; dressings for food; chutneys [condiments]; baked goods, confectionery, chocolate and desserts; salted wafer biscuits; salted biscuits; almond confectionery; almonds covered in chocolate; imitation custard; bread; chocolate flavourings; mousse confections; mousse confections; chocolate waffles; waffles with a chocolate coating; boiled confectionery; decorations [edible] for Christmas trees; crackers; panned sweets (non-medicated -); chocolate topping; boiled confectionery; boiled sweets; sweet pounded rice cakes (mochi-gashi); dried sugared cakes of rice flour (rakugan); pastries, cakes, tarts and biscuits (cookies); rice-based pudding dessert; chocolate decorations for Christmas trees; bakery goods; potato flour confectionery; confectionery for decorating Christmas trees; liquorice flavoured confectionery; orange based confectionery; dairy confectionery; chocolate flavoured confectionery; confectionery having wine fillings; confectionery items coated with chocolate; confectionery containing jelly; nut confectionery; confectionery having liquid fruit fillings; confectionery having liquid spirit fillings; confectionery containing jam; confectionery in frozen form; confectionery in liquid form; chocolate confectionery having a praline favour; chocolate confectionery containing pralines; spreads made from chocolate and nuts; chilled desserts; prepared desserts [confectionery]; candy; confectionery for decorating Christmas trees; flavoured sugar confectionery; candy; confectionery for decorating Christmas trees; sweets (candy), candy bars and chewing gum; fruit jellies [confectionery]; tablet (confectionary); panettone; caramels; candy; candy; frozen confectionery containing ice cream; frozen dairy confections; confectionery in frozen form; frozen confections on a stick; waffles; butterscotch chips; crackers; crackers flavoured with fruit; custard; custard; custard; chocolate creams; creamed rice; croissants; chocolate fondue; Turkish delight; Turkish delight coated in chocolate; soft pin-rolled cakes of pounded rice (gyuhi); cotton candy; chocolate coated nougat bars; nougat; marzipan; chocolate marzipan; non-medicated mint confectionery; non-medicated confectionery for use as part of a calorie controlled diet; non-medicated flour confectionery containing imitation chocolate; non-medicated flour confectionery coated with imitation chocolate; non-medicated flour confectionery containing chocolate; non-medicated confectionery having a milk flavour; non-medicated confectionery containing chocolate; non-medicated confectionery products; non-medicated flour confectionery coated with chocolate; non-medicated flour confectionery; non-medicated confectionery in the shape of eggs; non-medicated confectionery having toffee fillings; mint flavoured confectionery (non-medicated -); non-medicated confectionery containing milk; non-medicated confectionery products; non-medicated confectionery in jelly form; non-medicated chocolate confectionery; non-medicated confectionery products; non-medicated chocolate; fruited scones; snack foods consisting principally of confectionery; mousse confections; mousses (chocolate -); cereal bars and energy bars; peanut butter confectionery chips; chocolate coated macadamia nuts; chocolate coated nuts; coated nuts [confectionery]; pavlovas made with hazelnuts; chilled desserts; panettone; cocoa based creams in the form of spreads; sandwich spread made from chocolate and nuts; chocolate spreads; puddings; puddings; yorkshire puddings; wafered pralines; viennoiserie; bakery goods; foods with a cocoa base; chocolate for toppings; chocolate based products; cinnamon rolls; rice puddings containing sultanas and nutmeg; semolina pudding; chocolate topping; chocolate; aerated chocolate; chocolate spreads for use on bread; chocolate topping; chocolate for confectionery and bread; chocolate with alcohol; chocolate topping; chocolate decorations for cakes; chocolate decorations for confectionery items; liqueur chocolates; dessert souffles; sugar-coated coffee beans; pancakes; chocolate vermicelli; jam buns; imitation chocolate; marzipan substitutes; chocolate coated fruits; peanut confectionery; halvah; chocolate bark containing ground coffee beans; hushpuppies [breads]; bread casings filled with fruit; pitta bread; tortilla shells; unleavened bread; unfermented bread; tea cakes; breadcrumbs; danish bread; danish bread rolls; soft rolls [bread]; barm cakes; bagels; thin breadsticks; baguettes; biscuits [sweet or savoury]; crispbread snacks; aperitif biscuits; bread biscuits; taco shells; jam filled brioches; pykelets; crumpets; toasted bread; fresh bread; sandwich wraps [bread]; fruited malt loaf; thick breadsticks; toasts [biscuits]; baps; buns; bacon buns; malt bread; bread and buns; gluten-free bread; wholemeal bread; fruit breads; low-salt bread; garlic bread; scones; bread flavoured with spices; hardtack [biscuits]; chocolate covered pretzels; macaroons [pastry]; milk chocolate teacakes; wafers; flan base wafers; bean-jam filled wafers (monaka); chocolate caramel wafers; rolled wafers [biscuits]; chocolate wafers; pastry; almond pastries; pastry confectionery; viennese pastries; fruit filled pastry products; orange based pastry; pastries; pastries containing creams and fruit; pastries containing fruit; sweet biscuits for human consumption; chocolate pastries; danish pastries; prepared desserts [pastries]; tarts [sweet or savoury]; strawberry gateaux; flour confectionery; edible wafers; eclairs; cake dough; pastry dough; shortcrust pastry; puff pastry; almond cake; vol-au-vent cases; breakfast cake; treacle tarts; plum-cakes; frozen pastries; frozen pastry sheets; frozen cakes; shortbread part coated with chocolate; shortbread part coated with a chocolate flavoured coating; shortbread with a chocolate flavoured coating; doughnuts; long-life pastry; madeleines; apple tarts; muffins; fruit cake snacks; biscuits for human consumption made from malt; biscuits for human consumption made from cereals; petit-beurre biscuits; oat biscuits for human consumption; shortbread with a chocolate coating; biscuits flavoured with fruit; biscuits having a chocolate flavoured coating; biscuits with an iced topping; biscuits having a chocolate coating; half covered chocolate biscuits; biscuits containing fruit; biscuits containing chocolate flavoured ingredients; sponge fingers [cakes]; chocolate biscuits; gingerbread nuts; chocolate covered wafer biscuits; brownies; fresh pasties; chocolate pastes; pastries containing creams; non-meat pies; fruit cakes; iced cakes; sponge cake; egg roll cookies; profiteroles; petits fours [cakes]; savarins; cream puffs; vol-au-vents; tarts; covered tarts; fried dough cookies (karintoh); deep chocolate cake made with chocolate sponge; chocolate cakes; chocolate covered cakes; candy cake; cream cakes; iced sponge cakes; iced fruit cakes; cheesecakes; cream buns; rusks; pastry shells; Christmas puddings; cones for ice cream; gingerbread; foamed sugar pastilles; cachou [confectionery], other than for pharmaceutical purposes; foamed sugar sweets; lollipops; lollipops [confectionery]; sweets (non-medicated -) containing herbal flavourings; sweets (non-medicated -) in the nature of fudge; sweets (non-medicated -) in the nature of sugar confectionery; sweets (non-medicated -) in the nature of caramels; sweets (non-medicated -) in the nature of nougat; sweets (non-medicated -) being acidulated; sweets (non-medicated -) in compressed form; sweets (non-medicated -) being acidulated caramel sweets; boiled sweets; mint flavoured sweets (non-medicated -); marshmallow confectionery; sweetmeat made of sesame oil; fudge; chocolate fudge; liquorice [confectionery]; confectionery in the form of tablets; confectionery bars; sugared almonds; cake decorations made of candy; sugared beans (ama-natto); sweetmeats [candy] being flavoured with fruit; sweetmeats [candy] containing fruit; boiled sugar sweetmeats; chocolate candies; non-medicated confectionery candy; candy mints; candy with caramel; sugarless sweets; chewing candy; gum sweets; gum sweets (non-medicated -); clear gums [confectionery]; fruit gums [other than for medical use]; caramel; caramels; candy with cocoa; toffee; peppermint candy; jelly beans; starch-based candies (ame); filled sweetmeats; fruit drops [confectionery]; candy coated confections; crystal sugar pieces [confectionery]; pecan logs; dragees [non-medicated confectionery]; bonbons made of sugar; guar gum; soft caramels; marshmallows; mallows [confectionery]; chewing sweets (non-medicated -) having liquid fruit fillings; mint based sweets [non-medicated]; sweets (non-medicated -) in the nature of chocolate eclairs; non-medicated confectionery in the form of lozenges; chewing sweets (non-medicated -); non-medicated candy; candies (non-medicated -) with alcohol; sweets (non-medicated -) being alcohol based; sweets (non-medicated -) being honey based; candies (non-medicated -) with honey; chocolate coated marshmallow biscuits containing toffee; chocolate chips; acid drops [confectionery]; lozenges [confectionery]; easter eggs; chocolate bars; pralines; pralines made of chocolate; pralines with liquid filling; stick liquorice [confectionery]; candy bars; milk chocolate bars; rock [confectionery]; hard caramels [candies]; sugar-coated hard caramels; filled chocolate; marshmallow filled chocolates; chocolates with mint flavoured centres; chocolates in the form of pralines; chocolates in the form of sea horses; chocolate shells; chocolates in the form of sea shells; chocolate eggs; chocolate candy with fillings; corn candy; nonpareils; chewing gum, not for medical purposes; hand made candies; savory biscuits; crumble; meringues; rice-based pudding dessert; chocolate decorations for Christmas trees; bakery goods; dairy confectionery; graham crackers; tiramisu; fried dough twists; fruit jellies [confectionery]; marzipan substitutes; royal jelly; biological honey for human consumption; boiled sugar; sweet spreads [honey]; sweeteners (natural -); glucose powder for food; sugar; icing sugar; fruit sugar; palm sugar; sugar for making jellies; sugar for making jams; granulated sugar; cube sugar; sugar candy [for food]; caramelised sugar; brown sugar; sugar coated pine nuts; spray crystallized maltose for food; white sugar; honey; herbal honey; liquid sugar; sugar substitutes; fructose for food; honey substitutes; sweeteners (natural -) in granular form; natural sweeteners in the form of fruit concentrates; natural honey; natural ripe honey; edible ice powder for use in icing machines; yoghurt (frozen -) [confectionery ices]; ice cream gateaux; frozen yogurt confections; ice cream confectionery; sherbets [confectionery]; sherbets [ices]; fruit flavoured water ices in the form of lollipops; confectionery in frozen form; ice cream desserts; frozen lollipops; frozen confectionery containing ice cream; ice confectionery in the form of lollipops; frozen dairy confections; frozen confections on a stick; frozen custards; sherbet mixes; mixtures for making ice cream confections; mixtures for making frozen confections; mixtures for making water ices; mixtures for making ice cream products; frosting mixes; ice cream mixes; organic binding agents for ice cream; ice cubes; ice confectionery; ice beverages with a chocolate base; ice beverages with a cocoa base; ice beverages with a coffee base; iced confectionery (non-medicated -); dairy ice cream; ice milk [ice cream]; ices and ice; confectionery ices; yoghurt based ice cream [ice cream predominating]; ice creams flavoured with chocolate; flavored ices; ice creams containing chocolate; ice cream with fruit; water ice; ice lollies; ice cream; fruit ices; non-dairy ice cream; ice lollies containing milk; ice lollies being milk flavoured; ice cream sandwiches; edible fruit ices; ice cream stick bars; parfaits; ice cream (binding agents for -); ice cream drinks; instant dessert puddings; ices; soya based ice cream products; powders for ice cream; sorbets [water ices]; instant ice cream mixes; ice-cream cakes; ice cream substitute; soy-based ice cream substitute; aerated beverages [with coffee, cocoa or chocolate base]; ground coffee beans; ground coffee; coffee essences; chicory mixtures, all for use as substitutes for coffee; tea essences; aromatic teas [other than for medicinal use]; aromatic preparations for making non-medicated infusions; aromatic preparations for making non-medicated tisanes; herbal infusions; infusions, not medicinal; cocoa beverages with milk; coffee beverages with milk; chocolate beverages with milk; coffee based fillings; cocoa extracts for human consumption; extracts of cocoa for use as flavours in beverages; coffee extracts; extracts of coffee for use as flavours in beverages; extracts of coffee for use as flavours in foodstuffs; coffee extracts for use as substitutes for coffee; prepared cocoa and cocoa-based beverages; prepared coffee and coffee-based beverages; chocolate extracts; chocolate extracts for the preparation of beverages; tea extracts; espresso; hot chocolate; roasted coffee beans; cocoa; cocoa products; cocoa [roasted, powdered, granulated, or in drinks]; drinking cocoa paste; cocoa for use in making beverages; drinks in powder form containing cocoa; cocoa powder; cappuccino; coffee flavorings [flavourings]; coffee; coffee [roasted, powdered, granulated, or in drinks]; coffee (unroasted -); flavoured coffee; chocolate coffee; black tea; black tea [english tea]; cocoa mixes; mixtures of coffee; tea mixtures; iced tea (non-medicated -); iced coffee; preparations based on cocoa; preparations for making beverages [chocolate based]; preparations for making beverages [tea based]; preparations for making beverages [coffee based]; chocolate drink preparations; chocolate drink preparations flavoured with toffee; chocolate drink preparations flavoured with mint; chocolate drink preparations flavoured with banana; chocolate drink preparations flavoured with mocha; chocolate drink preparations flavoured with nuts; chocolate drink preparations flavoured with orange; vegetal preparations for use as coffee substitutes; drinks flavoured with chocolate; chocolate-based beverages with milk; green tea; drinking chocolate; chocolate syrup; chocolate syrups for the preparation of chocolate based beverages; chocolate flavoured beverage making preparations; chocolate; milk chocolates; chocolate powder; chocolates; chocolate food beverages not being dairy-based or vegetable based; instant cocoa powder; instant tea [other than for medicinal purposes]; instant coffee; coffee concentrates; packaged tea [other than for medicinal use]; ginseng tea [insamcha]; tea; teas (non-medicated -) containing lemon; ginseng tea; sage tea; tea for infusions; jasmine tea; teas (non-medicated -) flavoured with lemon; apple flavoured tea [other than for medicinal use]; lime tea; orange flavoured tea [other than for medicinal use]; red ginseng tea; ginger tea; iced tea; fruit teas; theine-free tea sweetened with sweeteners; artificial coffee; tea substitutes; tea bags; tea bags (non-medicated -); jasmine tea bags, other than for medicinal purposes; tea leaves; filters in the form of paper bags filled with coffee; starch for food; starches for dietetic purposes [other than pharmaceutical]; ready-to-eat cereals; hot breakfast cereals; breakfast cereals; breakfast cereals flavoured with honey; breakfast cereals containing a mixture of fruit and fibre; breakfast cereals containing fibre; breakfast cereals containing honey; breakfast cereals containing fruit; food mixtures consisting of cereal flakes and dried fruits; muesli; maize flakes; rye full grain grist; maize (processed -) for consumption by humans; foodstuffs made from cereals; bread doughs; alimentary paste [dough]; dough; cookie dough; wafer doughs; cake doughs; bun mix; mixes for making puddings; pancake mixes; mixes for the preparation of bread; cake mixes; ice cream cone mixes; cookies; preparations for making waffles; preparations for making gateaux; cake powder; cakes; puddings in powder form; baking powder; yeast; yeast powder; leaven; starches for dietetic purposes [other than pharmaceutical]; starch for food; aromatic preparations for pastries; aromatic preparations for cakes; whipped cream (preparations for stiffening -); ferments for pastes; preparations for making bakery products; carbohydrate preparations for food; preparations made from cereals; foodstuffs made from dough; farinaceous foods; natural starches for food.

Class 41: Services relating to nutrition; training in the display of food; training in the handling of food

Class 43: Self-service restaurants; food sculpting; arranging of wedding receptions [food and drink]; banqueting services; self-service restaurants; take-out restaurant services; snack-bars; delicatessens [restaurants]; cafeterias; making reservations and bookings for restaurants and meals; booking of restaurant seats; canteens; bar services; services for the preparation of food and drink; food preparation services; provision of information relating to bars; provision of information relating to restaurants; provision of information relating to the preparation of food and drink; cookery advice; providing of food and drink via a mobile truck; catering in fast-food cafeterias; tea rooms; restaurant services; restaurant services incorporating licensed bar facilities; corporate hospitality (provision of food and drink); ice cream parlour services; mobile catering services; mobile restaurant services; cocktail lounge services; club services for the provision of food and drink; bistro services; night club services [provision of food]; wine tasting services (provision of beverages); reservation services for booking meals; contract food services; consultancy services relating to food preparation; consultancy services relating to food; banqueting services; takeaway services; catering for the provision of food and beverages; catering for the provision of food and beverages; club services for the provision of food and drink; rental of chairs, tables, table linen, glassware.

2. European Union trade mark application No 14 284 558 is rejected for all the above goods and services. It may proceed for the remaining services in Classes 41 and 43.

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 14 284 558. The opposition is based on Greek trade mark registrations No 185 330 and No 185 331, in relation to which the opponent invoked Articles 8(1)(a) and (b) and 8(5) EUTMR, as well as on the following non-registered marks and other signs used in the course of trade:

‘ΧΑΤΖΗΦΩΤΙΟΥ, Χατζηφωτίου’ for goods and services in Classes 29, 30 and 35;
‘EST 1946’ or ‘since 1946’ for goods and services in Classes 29, 30 and 35;
‘CHOCOLATE WORKSHOP’ for goods and services in Classes 29, 30 and 35;
‘EXCLUSIVE CHOCOLATE(S)’ for goods and services in Classes 29, 30 and 35;
‘ΕΡΓΑΣΤΗΡΙ ΣΟΚΟΛAΤAΣ’ for goods and services in Classes 29, 30 and 35;
Figurative marks/signs representing ‘drawing of cocoa seeds’,

for which the opponent invoked Article 8(4) EUTMR.

PRELIMINARY REMARKS

On the observations of the parties

On 30/09/2015, within the time limit set by the Office, the applicant submitted its reply to the opponent’s observations, mostly in Greek and only accompanied by a case-law in the proceedings language, namely English. On 24/10/2016, after the expiry of the set period for submission of observations, the applicant submitted a translation of its first submission. As already communicated to the parties in the letters sent by the Office on 15/06/2017, the Office will not take into account the first submission of the applicant, received within the relevant period, as long as it contains observations filed in other language than the language of the proceedings, English, or one of the five official languages of the Office (English, German, Italian, Spanish, French).

On the evidence of the parties

Firstly, on 13/07/2016, the office received a set of evidence containing, inter alia, an original CD with relevant information concerning the proof of the opponent’s claim of reputation. However, contrary to the Office’s instructions, the CD file has been sent to the Office as a single sample with no accompanying copy or second sample for the other party in the proceedings. According to Rule 79a EUTMIR, ‘where a document or an item of evidence is submitted in accordance with Rule 79 point (a) by a party in a proceeding before the Office involving more than one party to the proceedings, the document or item of evidence, as well as any annex to the document, shall be submitted in as many copies as the number of parties to the proceedings.’ Consequently, the CD file has not been forwarded to the applicant and, in such case it will not be taken into account by the assessment of the evidence.

Secondly, in its observations the opponent refers on several occasions to the contested sign as filed in bad faith; furthermore, the opponent provided a set of evidence (Part B) to prove the infringement of duties and loyalty that occurred in the commercial relations between the parties. One way to describe bad faith is ‘conduct which departs from accepted principles of ethical behaviour or honest commercial and business practices’ (opinion of Advocate General Sharpston of 11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 60; similar decision of 01/04/2009, R 529/2008-4, FS (fig.), § 14). In order to find out whether the owner had been acting in bad faith at the time of filing the application, an overall assessment must be made in which all the relevant factors of the individual case must be taken into account.

However, the EUTMR considers ‘bad faith’ only as an absolute ground for the invalidity of an EUTM, to be relied on either before the Office or by means of a counterclaim in infringement proceedings. Therefore, bad faith is not relevant in examination or opposition proceedings (for opposition proceedings, see judgment of 17/12/2010, T-192/09, Seve Trophy, EU:T:2010:553, § 50). Consequently, the opponent’s set of evidence concerning the proof of bad faith cannot be treated in the present proceedings, as long as it has been provided with respect to another claim, not applicable in the opposition proceedings.

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 Greek trade mark registration No 185 330.

The goods and services

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

Class 29: Jellies, jams; compotes; eggs; milk and milk products

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

The contested goods and services are the following:

Class 41: Publication of printed matter; publishing of web magazines; publishing services for books and magazines; publication of books, magazines, almanacs and journals; publishing by electronic means; issue of publications; publication of printed matter relating to education; publication of printed matter and printed publications; publishing of documents; publication of manuals; publication of training manuals; publication of educational teaching materials; services for the publication of newsletters; publication of educational texts; publication of electronic magazines; publication of texts; publication of instructional literature; publication of leaflets; publication of magazines; electronic online publication of periodicals and books; providing on-line publications; providing electronic publications; editing of texts (except publicity texts); services for the publication of guide books; publication of electronic books and journals on-line; publication of books; publication and editing of printed matter; publication and edition of books; organisation of dancing displays; tutoring; rental of videotapes; planning (party -) [entertainment]; organisation of webinars; musical events (arranging of -); club services [entertainment or education]; services of schools [education]; education and instruction; preparation of texts for publication; recreation information; production of television and radio programs; production of shows; production of live television programmes for education; organization of balls; organising of festivals; fetes (organisation of -) for educational purposes; arranging and conducting of concerts; organisation of shows; rental of videotapes; rental of sound recordings; rental of audio equipment; performances (presentation of live -); rental of videotapes; education and instruction; organisation of seminars; conducting of seminars and congresses; arranging of competitions for educational purposes; arranging of lectures; arrangement of conventions for educational purposes; arranging of conventions for training purposes; arranging of demonstrations for training purposes; arranging and conducting educational conferences; arranging of displays for educational purposes; arranging of displays for training purposes; arranging of seminars relating to trade; organisation of seminars and conferences; arrangement of conferences for educational purposes; arrangement of conferences for recreational purposes; arranging of conferences relating to business; arranging of conferences relating to trade; organization of competitions; arranging of exhibitions for educational purposes; arranging of exhibitions for training purposes; organization of exhibitions for cultural or educational purposes; organising of education exhibitions; organising of competitions for education; arranging of seminars relating to business; arranging and conducting competitions; arranging and conducting of conferences; arranging and conducting of commercial, trade and business conferences; arranging and conducting of seminars; arranging and conducting of congresses; arranging and conducting of symposiums; arranging and conducting conferences and seminars; arrangement of seminars for educational purposes; organisation of seminars relating to training; organisation of meetings and conferences; seminars; conferences and exhibitions for educational or entertainment purposes, and seminars; congresses; rental of video recorders; video equipment hire; hire of sound recording apparatus; rental of tape recording equipment; rental of video cameras; rental of movie projectors and accessories; production of training videos; production of training films; production of audio/visual presentations; videotaping; television, radio and film production; correspondence courses; development of educational materials; dissemination of educational material; conducting of educational courses; conducting instructional courses; arranging teaching programmes; arranging professional workshop and training courses; organisation of training courses; arranging of festivals for training purposes; arranging of festivals for educational purposes; vocational testing; educational seminars; instruction via broadcasting; educational examination; educational services in the nature of correspondence courses; computer education training services; education services relating to nutrition; educational research; educational instruction; vocational retraining; training in the display of food; training relating to sales; training in the handling of food; courses (training -) relating to research and development; organising of commercial training; organising of educational lectures; organisation of symposia relating to education; organising of business training; arranging and conducting of colloquiums; workshops (arranging and conducting of -) [training]; arranging of presentations for educational purposes; organisation of symposia relating to training; organising of meetings in the field of education; organisation of conferences relating to vocational training; provision of instruction courses in general management; provision of training and education; provision of education on-line from a computer database or via the internet or extranets; conducting of courses; provision of training courses; provision of educational information; provision of training courses; information relating to education, provided on-line from a computer database or the internet; training; education information; training (practical -) [demonstration]; vocational guidance; academies [education]; developing educational manuals; training services relating to retail management; commercial training services; vocational training services; sales training services; training services relating to retail marketing; sales training services for retailers; commercial training services; training relating to sales; computer training.

Class 43: Self-service restaurants; food sculpting; arranging of wedding receptions [food and drink]; banqueting services; hiring of rooms for social functions; self-service restaurants; take-out restaurant services; snack-bars; delicatessens [restaurants]; cafeterias; making reservations and bookings for restaurants and meals; booking of restaurant seats; canteens; bar services; services for the preparation of food and drink; food preparation services; provision of information relating to bars; provision of information relating to restaurants; provision of information relating to the preparation of food and drink; cookery advice; providing of food and drink via a mobile truck; catering in fast-food cafeterias; tea rooms; restaurant services; restaurant services incorporating licensed bar facilities; corporate hospitality (provision of food and drink); ice cream parlour services; mobile catering services; mobile restaurant services; cocktail lounge services; club services for the provision of food and drink; bistro services; night club services [provision of food]; wine tasting services (provision of beverages); reservation services for booking meals; contract food services; consultancy services relating to food preparation; consultancy services relating to food; banqueting services; takeaway services; catering for the provision of food and beverages; catering for the provision of food and beverages; club services for the provision of food and drink; rental of meeting rooms; rental of temporary accommodation; rental of chairs, tables, table linen, glassware.

The earlier Greek trade mark No 185 330 is registered for the entire class heading of Class 30 of the Nice Classification. It was filed on 25/05/2006. In accordance with the Common Communication on the Implementation of ‘IP Translator’ of the European Trade Mark and Design Network, the Office considers that its scope of protection includes both the natural and usual meaning of the general indications in the heading and the alphabetical list of the classes concerned in the edition of the Nice Classification in force at the time when the filing was made, in this case the 8th edition.

Therefore, apart from the natural meanings of the general indications in Class 30, the opposition is further based on the following additional goods (orphans) covered by the entire class heading of Class 30:

Class 30: Bee glue [propolis] for human consumption; essences for foodstuffs [except etheric essences and essential oils]; flavorings, other than essential oils; flavorings, other than essential oils, for beverages; flavorings, other than essential oils, for cakes; ice cream (binding agents for -); meat tenderizers, for household purposes; powders for ice cream; puddings; royal jelly for human consumption [not for medical purposes]; sandwiches; sausage binding materials; sea water [for cooking]; spring rolls; starch for food; starch products for food; stiffening whipped cream (Preparations for -); sushi; thickening agents for cooking foodstuffs.

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 30

Ices (listed twice) and ice; confectionery, bread; pastry; sandwiches (listed twice); powders for ice cream; starch for food (listed twice); puddings (listed twice); essences for foodstuffs, except etheric essences and essential oils; flavourings, other than essential oils, for cakes (listed twice); food flavorings, other than essential oils; ice cream (binding agents for -); whipped cream (preparations for stiffening -) are identically contained in both lists of goods (including synonyms or alternative spelling of the terms).

The contested baked goods, pretzels; savory pastries; flapjacks; crumble; canapes; mincemeat pies; quiches (listed twice); meat pies; filled baguettes; pies; filled bread rolls (listed twice); sweet pounded rice cakes (mochi-gashi); dried sugared cakes of rice flour (rakugan); pastries, cakes, tarts and biscuits (cookies); bakery goods (listed three times); waffles; butterscotch chips; fruited scones; panettone; cinnamon rolls; pancakes; jam buns; hushpuppies [breads]; bread casings filled with fruit; pitta bread; tortilla shells; unleavened bread; unfermented bread; tea cakes; breadcrumbs; danish bread; danish bread rolls; soft rolls [bread]; barm cakes; bagels; thin breadsticks; baguettes; biscuits [sweet or savoury]; crispbread snacks; aperitif biscuits; bread biscuits; taco shells; jam filled brioches; pykelets; crumpets; toasted bread; fresh bread; sandwich wraps [bread]; fruited malt loaf; thick breadsticks; toasts [biscuits]; baps; buns; bacon buns; malt bread; bread and buns; gluten-free bread; wholemeal bread; fruit breads; low-salt bread; garlic bread; scones; bread flavoured with spices; hardtack [biscuits]; chocolate covered pretzels; macaroons [pastry]; milk chocolate teacakes; wafers; flan base wafers; bean-jam filled wafers (monaka); chocolate caramel wafers; rolled wafers [biscuits]; chocolate wafers; almond pastries; pastry confectionery; viennese pastries; fruit filled pastry products; orange based pastry; pastries; pastries containing creams and fruit; pastries containing fruit; sweet biscuits for human consumption; chocolate pastries; danish pastries; prepared desserts [pastries]; tarts [sweet or savoury]; strawberry gateaux; flour confectionery; edible wafers; eclairs; cake dough; pastry dough; shortcrust pastry; puff pastry; almond cake; vol-au-vent cases; breakfast cake; treacle tarts; plum-cakes; frozen pastries; frozen pastry sheets; frozen cakes; shortbread part coated with chocolate; shortbread part coated with a chocolate flavoured coating; shortbread with a chocolate flavoured coating; doughnuts; long-life pastry; madeleines; apple tarts; muffins; fruit cake snacks; biscuits for human consumption made from malt; biscuits for human consumption made from cereals; petit-beurre biscuits; oat biscuits for human consumption; shortbread with a chocolate coating; biscuits flavoured with fruit; biscuits having a chocolate flavoured coating; biscuits with an iced topping; biscuits having a chocolate coating; half covered chocolate biscuits; biscuits containing fruit; biscuits containing chocolate flavoured ingredients; sponge fingers [cakes]; chocolate biscuits; gingerbread nuts; chocolate covered wafer biscuits; brownies; fresh pasties; pastries containing creams; non-meat pies; fruit cakes; iced cakes; sponge cake; egg roll cookies; profiteroles; petits fours [cakes]; savarins; cream puffs; vol-au-vents; tarts; covered tarts; fried dough cookies (karintoh); deep chocolate cake made with chocolate sponge; chocolate cakes; chocolate covered cakes; candy cake; cream cakes; cheesecakes; cream buns; rusks; pastry shells; cones for ice cream; gingerbread; savory biscuits; crumble; tiramisu; fried dough twists; bread doughs; alimentary paste [dough]; dough; cookie dough; wafer doughs; cake doughs; bun mix; mixes for making puddings; pancake mixes; mixes for the preparation of bread; cake mixes; ice cream cone mixes; cookies; preparations for making waffles; preparations for making gateaux; cakes are included in the broad categories of, or overlap with, the opponent’s bread and pastry. Therefore, they are identical.

The contested chocolate and desserts; salted wafer biscuits; salted biscuits; almond confectionery; almonds covered in chocolate; chocolate flavourings; mousse confections (listed twice); chocolate waffles; waffles with a chocolate coating; boiled confectionery; decorations [edible] for Christmas trees; chocolate decorations for Christmas trees (listed twice); panned sweets (non-medicated -); chocolate topping; boiled confectionery; boiled sweets; potato flour confectionery; confectionery for decorating Christmas trees (listed three times); liquorice flavoured confectionery; orange based confectionery; dairy confectionery (listed twice); chocolate flavoured confectionery; confectionery having wine fillings; confectionery items coated with chocolate; confectionery containing jelly; nut confectionery; confectionery having liquid fruit fillings; confectionery having liquid spirit fillings; confectionery containing jam; confectionery in frozen form; confectionery in liquid form; chocolate confectionery having a praline favour; chocolate confectionery containing pralines; spreads made from chocolate and nuts; prepared desserts [confectionery]; candy (listed four times ); flavoured sugar confectionery; sweets (candy), candy bars and chewing gum; fruit jellies [confectionery]; tablet (confectionary); panettone; caramels; chocolate creams; creamed rice; croissants; chocolate fondue; turkish delight; turkish delight coated in chocolate; soft pin-rolled cakes of pounded rice (gyuhi); cotton candy; chocolate coated nougat bars; nougat; marzipan; chocolate marzipan; non-medicated mint confectionery; non-medicated confectionery for use as part of a calorie controlled diet; non-medicated flour confectionery containing imitation chocolate; non-medicated flour confectionery coated with imitation chocolate; non-medicated flour confectionery containing chocolate (listed twice); non-medicated confectionery having a milk flavour; non-medicated confectionery products; non-medicated flour confectionery coated with chocolate; non-medicated flour confectionery; non-medicated confectionery in the shape of eggs; non-medicated confectionery having toffee fillings; mint flavoured confectionery (non-medicated -); non-medicated confectionery containing milk; non-medicated confectionery products; non-medicated confectionery in jelly form; non-medicated chocolate confectionery; non-medicated confectionery products; non-medicated chocolate; snack foods consisting principally of confectionery; mousse confections; mousses (chocolate -); peanut butter confectionery chips; chocolate coated macadamia nuts; chocolate coated nuts; coated nuts [confectionery]; pavlovas made with hazelnuts; cocoa based creams in the form of spreads; sandwich spread made from chocolate and nuts; chocolate spreads; wafered pralines; viennoiserie; foods with a cocoa base; chocolate for toppings; chocolate based products; chocolate topping (listed three times); chocolate; aerated chocolate; chocolate spreads for use on bread; chocolate for confectionery and bread; chocolate with alcohol; chocolate decorations for cakes; chocolate decorations for confectionery items; liqueur chocolates; dessert souffles; sugar-coated coffee beans; chocolate vermicelli; imitation chocolate; marzipan substitutes; chocolate coated fruits; peanut confectionery; halvah; chocolate bark containing ground coffee beans; chocolate pastes; foamed sugar pastilles; cachou [confectionery], other than for pharmaceutical purposes; foamed sugar sweets; lollipops; lollipops [confectionery]; sweets (non-medicated -) containing herbal flavourings; sweets (non-medicated -) in the nature of fudge; sweets (non-medicated -) in the nature of sugar confectionery; sweets (non-medicated -) in the nature of caramels; sweets (non-medicated -) in the nature of nougat; sweets (non-medicated -) being acidulated; sweets (non-medicated -) in compressed form; sweets (non-medicated -) being acidulated caramel sweets; boiled sweets; mint flavoured sweets (non-medicated -); marshmallow confectionery; sweetmeat made of sesame oil; fudge; chocolate fudge; liquorice [confectionery]; confectionery in the form of tablets; confectionery bars; sugared almonds; cake decorations made of candy; sugared beans (ama-natto); sweetmeats [candy] being flavoured with fruit; sweetmeats [candy] containing fruit; boiled sugar sweetmeats; chocolate candies; non-medicated confectionery candy; candy mints; candy with caramel; sugarless sweets; chewing candy; gum sweets; gum sweets (non-medicated -); clear gums [confectionery]; fruit gums [other than for medical use]; caramel; caramels; candy with cocoa; toffee; peppermint candy; jelly beans; starch-based candies (ame); filled sweetmeats; fruit drops [confectionery]; candy coated confections; crystal sugar pieces [confectionery]; pecan logs; dragees [non-medicated confectionery]; bonbons made of sugar; guar gum; soft caramels; marshmallows; mallows [confectionery]; chewing sweets (non-medicated -) having liquid fruit fillings; mint based sweets [non-medicated]; sweets (non-medicated -) in the nature of chocolate eclairs; non-medicated confectionery in the form of lozenges; chewing sweets (non-medicated -); non-medicated candy; candies (non-medicated -) with alcohol; sweets (non-medicated -) being alcohol based; sweets (non-medicated -) being honey based; candies (non-medicated -) with honey; chocolate coated marshmallow biscuits containing toffee; chocolate chips; acid drops [confectionery]; lozenges [confectionery]; easter eggs; chocolate bars; pralines; pralines made of chocolate; pralines with liquid filling; stick liquorice [confectionery]; candy bars; milk chocolate bars; rock [confectionery]; hard caramels [candies]; sugar-coated hard caramels; filled chocolate; marshmallow filled chocolates; chocolates with mint flavoured centres; chocolates in the form of pralines; chocolates in the form of sea horses; chocolate shells; chocolates in the form of sea shells; chocolate eggs; chocolate candy with fillings; corn candy; nonpareils; chewing gum, not for medical purposes; hand made candies; meringues; fruit jellies [confectionery]; marzipan substitutes; sherbets [confectionery] are included in the broad category of, or overlap with, the opponent’s confectionery. Therefore, they are identical.

The contested maize, roasted; foodstuffs made from cereals; preparations made from cereals; chips [cereal products]; crackers (listed twice); crackers made of prepared cereals; crackers filled with cheese; crackers flavoured with herbs; prawn crackers; crackers flavoured with meat; crackers flavoured with vegetables; crackers flavoured with spices; crackers flavoured with cheese; crackers flavoured with fruit; graham crackers; rice crackers; snack foods prepared from maize; snack foods consisting principally of extruded cereals; cereal-based snack food; cereal-based snack food (listed twice); snack foods made from wheat (listed twice); snack foods made of whole wheat; snack foods made from corn; rice cakes; rice biscuits; cereal bars and energy bars; candy coated popcorn; caramel coated popcorn; flavoured popcorn; caramel coated popcorn with candied nuts; ready-to-eat cereals; hot breakfast cereals; breakfast cereals; breakfast cereals flavoured with honey; breakfast cereals containing a mixture of fruit and fibre; breakfast cereals containing fibre; breakfast cereals containing honey; breakfast cereals containing fruit; food mixtures consisting of cereal flakes and dried fruits; muesli; maize flakes; rye full grain grist; maize (processed -) for consumption by humans; foodstuffs made from dough; farinaceous foods; snack food products made from rice flour; rice-based snack food are included in the broad category of, or overlap with, the opponent’s flour and preparations made from cereals. Therefore, they are identical.

The contested chilled desserts (listed twice); frozen confectionery containing ice cream; frozen dairy confections; confectionery in frozen form; frozen confections on a stick; iced sponge cakes; iced fruit cakes; yoghurt (frozen -) [confectionery ices]; ice cream gateaux; frozen yogurt confections; ice cream confectionery; sherbets [ices]; fruit flavoured water ices in the form of lollipops; confectionery in frozen form; ice cream desserts; frozen lollipops; frozen confectionery containing ice cream; ice confectionery in the form of lollipops; frozen dairy confections; frozen confections on a stick; frozen custards; sherbet mixes; mixtures for making ice cream confections; mixtures for making frozen confections; mixtures for making water ices; mixtures for making ice cream products; frosting mixes; ice cream mixes; ice cubes; ice confectionery; iced confectionery (non-medicated -); dairy ice cream; ice milk [ice cream]; confectionery ices; yoghurt based ice cream [ice cream predominating]; ice creams flavoured with chocolate; flavored ices; ice creams containing chocolate; ice cream with fruit; water ice; ice lollies; ice cream; fruit ices; non-dairy ice cream; ice lollies containing milk; ice lollies being milk flavoured; ice cream sandwiches; edible fruit ices; ice cream stick bars; parfaits; ice cream drinks; soya based ice cream products; sorbets [water ices]; instant ice cream mixes; ice-cream cakes; ice cream substitute; soy-based ice cream substitute are included in the broad category of, or overlap with, the opponent’s ices. Therefore, they are identical.

The contested biological honey for human consumption; boiled sugar; sweet spreads [honey]; sweeteners (natural -); glucose for culinary purposes; glucose powder for food; sugar; icing sugar; fruit sugar; palm sugar; sugar for making jellies; sugar for making jams; granulated sugar; cube sugar; sugar candy [for food]; caramelised sugar; brown sugar; sugar coated pine nuts; spray crystallized maltose for food; white sugar; honey; herbal honey; liquid sugar; sugar substitutes; fructose for food; honey substitutes; sweeteners (natural -) in granular form; natural sweeteners in the form of fruit concentrates; natural honey; natural ripe honey are included in, or overlap with, the opponent’s broad categories of sugar, honey and treacle. Therefore, they are identical.

The contested cake powder; baking powder; yeast; yeast powder; leaven; ferments for pastes; preparations for making bakery products; carbohydrate preparations for food are included in, include or overlap with, the opponent’s categories yeast and baking powder. Therefore, they are identical.

The contested aromatic preparations for ice-creams; aromatic preparations for pastries (listed twice); aromatic preparations for food; aromatic preparations for cakes (listed twice); aromatic preparations for candies; flavoured vinegar; vanilla; vanilla flavorings; vanillin [vanilla substitute]; seasonings (listed twice); culinary herbs; garden herbs, preserved [seasonings]; edible essences for foodstuffs [other than etheric substances and essential oils]; alimentary seasonings; sauce [edible]; cloves [spice]; clove powder [spice]; aniseed; alimentary seasonings; extracts of cocoa for use as flavours in foodstuffs; extracts used as flavoring [not essential oils]; cinnamon [spice] (listed twice); turmeric; marshmallow topping; mint for confectionery; custard mixes; seasoning mixes; sauces for ice cream; dressings for food; chutneys [condiments]; imitation custard; custard (listed three times) are included in, or overlap with, the opponent’s broad categories of sauces (condiments) and spices. Therefore, they are identical.

The contested ice beverages with a chocolate base; ice beverages with a cocoa base; ice beverages with a coffee base; coffee flavorings [flavourings] (listed twice); aerated beverages [with coffee, cocoa or chocolate base]; ground coffee beans; ground coffee; coffee essences; chicory mixtures, all for use as substitutes for coffee; tea essences; aromatic teas [other than for medicinal use]; aromatic preparations for making non-medicated infusions; aromatic preparations for making non-medicated tisanes; herbal infusions; infusions, not medicinal; cocoa beverages with milk; coffee beverages with milk; chocolate beverages with milk; coffee based fillings; cocoa extracts for human consumption; extracts of cocoa for use as flavours in beverages; coffee extracts; extracts of coffee for use as flavours in beverages; extracts of coffee for use as flavours in foodstuffs; coffee extracts for use as substitutes for coffee; prepared cocoa and cocoa-based beverages; prepared coffee and coffee-based beverages; chocolate extracts; chocolate extracts for the preparation of beverages; tea extracts; espresso; hot chocolate; roasted coffee beans; cocoa; cocoa products; cocoa [roasted, powdered, granulated, or in drinks]; drinking cocoa paste; cocoa for use in making beverages; drinks in powder form containing cocoa; cocoa powder; cappuccino; coffee; coffee [roasted, powdered, granulated, or in drinks]; coffee (unroasted -); flavoured coffee; chocolate coffee; black tea; black tea [english tea]; cocoa mixes; mixtures of coffee; tea mixtures; iced tea (non-medicated -); iced coffee; preparations based on cocoa; preparations for making beverages [chocolate based]; preparations for making beverages [tea based]; preparations for making beverages [coffee based]; chocolate drink preparations; chocolate drink preparations flavoured with toffee; chocolate drink preparations flavoured with mint; chocolate drink preparations flavoured with banana; chocolate drink preparations flavoured with mocha; chocolate drink preparations flavoured with nuts; chocolate drink preparations flavoured with orange; vegetal preparations for use as coffee substitutes; drinks flavoured with chocolate; chocolate-based beverages with milk; green tea; drinking chocolate; chocolate syrup; chocolate syrups for the preparation of chocolate based beverages; chocolate flavoured beverage making preparations; chocolate; milk chocolates; chocolate powder; chocolates; chocolate food beverages not being dairy-based or vegetable based; instant cocoa powder; instant tea [other than for medicinal purposes]; instant coffee; coffee concentrates; packaged tea [other than for medicinal use]; ginseng tea [insamcha]; tea; teas (non-medicated -) containing lemon; ginseng tea; sage tea; tea for infusions; jasmine tea; teas (non-medicated -) flavoured with lemon; apple flavoured tea [other than for medicinal use]; lime tea; orange flavoured tea [other than for medicinal use]; red ginseng tea; ginger tea; iced tea; fruit teas; theine-free tea sweetened with sweeteners; artificial coffee; tea substitutes; tea bags; tea bags (non-medicated -); jasmine tea bags, other than for medicinal purposes; tea leaves; filters in the form of paper bags filled with coffee are included in, include, or overlap with, the opponent’s broad categories of coffee, tea, cocoa and artificial coffee. Therefore, they are identical.

The contested royal jelly includes the opponent’s royal jelly for human consumption [not for medical purposes]. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested starches for dietetic purposes [other than pharmaceutical] (listed twice); natural starches for food are included in the opponent’s starch products for food. They are identical.

The contested toasted sandwiches; wrap [sandwich] are included in the opponent’s sandwiches. They are identical.

The contested yorkshire puddings; Christmas puddings; rice puddings containing sultanas and nutmeg; semolina pudding; instant dessert puddings; rice-based pudding dessert (listed twice); puddings in powder form; mixes for making puddings are included in, or overlap with, the opponent’s broad term puddings. They are identical.

The contested flavorings (listed twice); flavourings for foods; essences for food [other than essential oils]; flavourings for cakes; flavourings made from fruits; flavourings made from fruits [other than essential oils] are included in, or overlap with, the opponent’s food flavorings, other than essential oils. They are identical.

The contested edible ice powder for use in icing machines and organic binding agents for ice cream; overlap with the opponent’s powders for ice cream and ice cream (binding agents for -), respectively. They are identical.

Contested services in Class 41

The contested publishing of web magazines; publishing services for books and magazines; publication of books (listed twice), magazines (listed twice), almanacs and journals; publishing by electronic means; issue of publications; publication of printed matter relating to education; publication of printed matter (listed twice) and printed publications; publishing of documents; publication of manuals; publication of training manuals; publication of educational teaching materials; services for the publication of newsletters; publication of educational texts; publication of electronic magazines; publication of texts; publication of instructional literature; publication of leaflets; electronic online publication of periodicals and books; providing on-line publications; providing electronic publications; editing of texts (except publicity texts); services for the publication of guide books; publication of electronic books and journals on-line; publication and editing of printed matter; publication and edition of books; organisation of dancing displays; tutoring; rental of videotapes (listed three times); planning (party -) [entertainment]; organisation of webinars; musical events (arranging of -); club services [entertainment or education]; services of schools [education]; education and instruction; preparation of texts for publication; recreation information; production of television and radio programs; production of shows; production of live television programmes for education; organization of balls; organising of festivals; fetes (organisation of -) for educational purposes; arranging and conducting of concerts; organisation of shows; rental of sound recordings; rental of audio equipment; performances (presentation of live -); education and instruction; organisation of seminars; conducting of seminars and congresses; arranging of competitions for educational purposes; arranging of lectures; arrangement of conventions for educational purposes; arranging of conventions for training purposes; arranging of demonstrations for training purposes; arranging and conducting educational conferences; arranging of displays for educational purposes; arranging of displays for training purposes; arranging of seminars relating to trade; organisation of seminars and conferences; arrangement of conferences for educational purposes; arrangement of conferences for recreational purposes; arranging of conferences relating to business; arranging of conferences relating to trade; organization of competitions; arranging of exhibitions for educational purposes; arranging of exhibitions for training purposes; organization of exhibitions for cultural or educational purposes; organising of education exhibitions; organising of competitions for education; arranging of seminars relating to business; arranging and conducting competitions; arranging and conducting of conferences; arranging and conducting of commercial, trade and business conferences; arranging and conducting of seminars; arranging and conducting of congresses; arranging and conducting of symposiums; arranging and conducting conferences and seminars; arrangement of seminars for educational purposes; organisation of seminars relating to training; organisation of meetings and conferences; seminars; conferences and exhibitions for educational or entertainment purposes, and seminars; congresses; rental of video recorders; video equipment hire; hire of sound recording apparatus; rental of tape recording equipment; rental of video cameras; rental of movie projectors and accessories; production of training videos; production of training films; production of audio/visual presentations; videotaping; television, radio and film production; correspondence courses; development of educational materials; dissemination of educational material; conducting of educational courses; conducting instructional courses; arranging teaching programmes; arranging professional workshop and training courses; organisation of training courses; arranging of festivals for training purposes; arranging of festivals for educational purposes; vocational testing; educational seminars; instruction via broadcasting; educational examination; educational services in the nature of correspondence courses; computer education training services; education services relating to nutrition; educational research; educational instruction; vocational retraining; training in the display of food; training relating to sales; training in the handling of food; courses (training -) relating to research and development; organising of commercial training; organising of educational lectures; organisation of symposia relating to education; organising of business training; arranging and conducting of colloquiums; workshops (arranging and conducting of -) [training]; arranging of presentations for educational purposes; organisation of symposia relating to training; organising of meetings in the field of education; organisation of conferences relating to vocational training; provision of instruction courses in general management; provision of training and education; provision of education on-line from a computer database or via the internet or extranets; conducting of courses; provision of training courses; provision of educational information; provision of training courses; information relating to education, provided on-line from a computer database or the internet; training; education information; training (practical -) [demonstration]; vocational guidance; academies [education]; developing educational manuals; training services relating to retail management; commercial training services; vocational training services; sales training services; training services relating to retail marketing; sales training services for retailers; commercial training services; training relating to sales; computer training are various services globally related to entertainment and education, in particular publication of different printed matters and online publications, providing of training in fields such as business and different cultural activities, organising and arrangement of various events for the purposes of training and acquiring of skills, etc. These services are usually rendered by persons or institutions in the development of the mental facilities of persons and are intended to engage the attention or entertain. On the other hand, the opponent’s goods in Classes 29 and 30 are foodstuffs intended for consumption and usually sold in discount department stores, grocery stores, markets, etc. It is obvious that the goods and services in question cover completely different commercial areas and satisfy different needs, physiological need of a person versus its self-esteem and social appearance. Consequently, they will not coincide in any of the relevant Canon factors, in particular relevant distribution channels and publics, origin, nature, methods of use and purpose. These goods and services have no complementarity or competition relation either. They are dissimilar.

Contested services in Class 43

The contested self-service restaurants (listed twice); take-out restaurant services; snack-bars; delicatessens [restaurants]; cafeterias; canteens; tea rooms; bar services; restaurant services; restaurant services incorporating licensed bar facilities; ice cream parlour services; cocktail lounge services; club services for the provision of food and drink (listed twice); bistro services; night club services [provision of food]; takeaway services; providing of food and drink via a mobile truck are services related to various types of facilities, where particular meals/ or drinks are served or offered to take away. In principle, the fact that foods and drinks may be provided at such places is not itself sufficient to lead to a similarity. However, a certain relation between these services and some of the opponent’s goods in Classes 29 and 30 cannot be denied. The opponent’s foodstuffs and beverages in question may have a complementarity character to the contested services of provision of food and drink, as it cannot be ruled out that these products for consumption are prepared on the premises of the same facilities. For instance the contested ice cream parlour services may offer the opponent’s ices; the contested tea rooms may offer the opponent’s tea and infusions; the contested restaurants and cafeterias may serve different meals and beverages, covered in the opponent’s list of goods such as preparations made from cereals, confectionery, etc. Since these goods and services may have the same provider and they coincide in their distribution channels, they are considered similar to a low degree.

The contested food sculpting; services for the preparation of food and drink; food preparation services; catering in fast-food cafeterias; corporate hospitality (provision of food and drink); mobile catering services; mobile restaurant services; catering for the provision of food and beverages (listed twice); arranging of wedding receptions [food and drink]; banqueting services (listed twice), although not strictly connected to a particular venue where the opponent’s goods may be offered/provided, are in another way implying the provision of food and drinks, for instance via mobile, catering or other arrangement services including food and drink provision such as banqueting services, arranging of wedding receptions, etc. Some of the opponent’s goods in Class 30 may be also complementary to these contested services, for instance the opponent’s confectionery, bread and pastry. They may coincide in their origin and may be offered through the same distribution channels. Therefore, they are similar to a low degree as well.

However, the contested wine tasting services (provision of beverages), which consist in degustation of wine, are not related to any of the opponent’s goods being foodstuffs and non-alcoholic beverages or beverage different from wine. It is unlikely that the opponent’s goods and the contested services in this situation will coincide in their origin or distribution channels. They are considered dissimilar.

Furthermore, the contested hiring of rooms for social functions; making reservations and bookings for restaurants and meals; booking of restaurant seats; provision of information relating to bars; provision of information relating to restaurants; provision of information relating to the preparation of food and drink; cookery advice; reservation services for booking meals; contract food services; consultancy services relating to food preparation; consultancy services relating to food; rental of meeting rooms; rental of temporary accommodation; rental of chairs, tables, table linen, glassware are considered dissimilar to the opponent’s goods in Classes 29 and 30. These services are not directly food or drink provision services themselves but rather auxiliary services to the ones already listed before. A similarity between these services and the opponent’s goods is in this case scenario rather unlikely as they belong to very remote commercial sectors.

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 a low degree are directed at the public at large. However, it cannot be excluded that also professional customers may be a target group of the relevant goods and services.

The degree of attention is rather average for the goods in Class 30; however, it may vary from average to high, depending on the specialised nature of the services in Class 43, especially depending on the frequency of purchase and their conditions, for instance if they involve providing of services for important events.

The signs

Earlier trade mark

Contested sign

The relevant territory is Greece.

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 opponent’s sign is a figurative mark consisting of the verbal element ‘Χατζηφωτίου’ written in black title case letters, among which the letter ‘φ’ is highly stylised.

The contested sign is a figurative mark consisting of the verbal elements ‘ΓΙΩΡΓΟΣ ΧΑΤΖΗΦΩΤΙΟΥ’ written in two lines in standard upper case letters, where a red figurative device resembling cocoa beans is placed above between the word ‘EST’ and the number ‘1946’. Furthermore, a smaller verbal element in red, ‘CHOCOLATES’, is placed under the other elements of the sign.

Apart from the stylised letters, the verbal elements ‘Χατζηφωτίου’ and ‘ΧΑΤΖΗΦΩΤΙΟΥ’ of both signs represent the same Greek surname that will be perceived by the relevant public as a rather uncommon Greek family name. Furthermore, the name ‘‘ΓΙΩΡΓΟΣ’ in the contested sign will be perceived as a common male first name, equivalent to George. These elements are considered of a normal distinctiveness for the relevant goods and services.

Therefore, the earlier mark has no elements that could be considered clearly more distinctive than other elements.

However, the element ‘cholocates’ of the contested sign will be understood by the Greek public due to the very close equivalent in Greek, namely ‘Σοκολάτες’. The figurative device will be seen as cocoa beans, as mentioned above. Since the relevant goods and services are foodstuffs or services related to the provision of foods and drinks, this word and the figurative device are considered of, the most, a less distinctive character as they might be non-distinctive, weak or allusive in relation to the goods and services in question.

Furthermore, the expression ‘EST 1946’ in the contested sign will be associated with the year of establishment of the particular business and as such it cannot be considered a strong indicator of commercial origin. Therefore, it is considered weak in relation to all the goods and services.

The entire name ‘ΓΙΩΡΓΟΣ ΧΑΤΖΗΦΩΤΙΟΥ’ is the dominant element in the contested sign as it is the most eye-catching, due to its central position and relatively bigger size.

Visually, the signs coincide in the letters ‘ΧΑΤΖΗΦΩΤΙΟΥ’, albeit their slightly different graphical representation. They differ in the remaining verbal and figurative elements in the contested sign, as referred to above, namely the name ‘ΓΙΩΡΓΟΣ’, the expression ‘EST 1946’, the cocoa beans and the word ‘chocolates’. However, bearing in mind the distinctiveness of these elements, the lack of such, respectively, the signs are considered visually at least similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the name ‛‘ΧΑΤΖΗΦΩΤΙΟΥ’, present identically in both signs. The pronunciation differs in the sound of the first name ‘ΓΙΩΡΓΟΣ’ of the contested mark, which has no counterpart in the earlier mark. Bearing in mind the less distinctiveness of the remaining verbal elements or the lack of such, the signs are considered aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with the same rare family name and bearing in mind the rather common character of the first name ‘‘ΓΙΩΡΓΟΣ’ in the contested sign, as well as the (at least) lower distinctiveness of the remaining verbal and figurative elements of that sign, the signs are considered highly 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. 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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

Global assessment, other arguments and conclusion

The relevant goods and services are found partly identical and similar to a low degree and partly dissimilar. The degree of attention of the relevant public is considered rather average in relation to the goods in Class 30, as well as slightly heightened in relation to some of the services in Class 43 that may involve the arrangement and the management of an important event.

As far as the comparison of the signs is concerned, account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Furthermore, even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T 443/12, ancotel, EU:T:2013:605, § 54).

The signs are found aurally and conceptually highly similar and visually at least similar to an average degree to the extent that they both incorporate the rare Greek family name ‘‘Χατζηφωτίου’. As mentioned above, the remaining different elements in the contested sign have a less distinctive character or bear no distinctiveness at all in relation to the goods and services in question. Furthermore, as referred to above, the differentiating first name of the contested sign is a male name with a common character among the Greek public. In fact, when both trade marks can be understood by the relevant public as referring to the same person, especially when the earlier trade mark is composed solely of a family name, as in the present case, this may be a sufficient reason for concluding on a similarity between the signs. That similarity may be reinforced when one name is more important than the other. This finding has been confirmed on many occasions also by the General Court decisions (13/07/2005, T 40/03, Julián Murúa Entrena, EU:T:2005:285, § 78; 06/06/2013, C 381/12 P, B. Antonio Basile 1952, EU:C:2013:371).

In addition, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). In the present case, it cannot be ruled out that encountering the signs consumers may wrongly assume an economic connection and identical origin of the goods and services in question since the marks bear an identical surname.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17). Consequently, bearing in mind the similarity between the signs concluded above, this might be sufficient to overcome to low similarity between some of the contested services and the opponent’s goods.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Greek-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s Greek trade mark registration.

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 a low degree (for which the principle of interdependence applies) to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services 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 reputation as claimed by the opponent and in relation to identical and similar goods and services. The result would be the same even if the earlier 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 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 Greek trade mark registration No 185 331 for the figurative mark registered for goods in Classes 29 and 30, identical to those already examined above.

Since this mark covers the same or a narrower scope of goods, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining services because the signs and/or the goods and services are obviously not identical.

REPUTATION – ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier Greek trade mark registration No 185 330, for which the opponent claimed repute in Greece.

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

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

Reputation of the earlier trade mark

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

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 23/06/2015. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Greece prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 29: Jellies, jams; compotes; eggs; milk and milk products

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 13/07/2016, the opponent submitted evidence to support this claim. As the Opposition Division considers some of the evidence to be legal documents containing confidential data and information, the Opposition Division will describe the set of evidence only in the most general terms without divulging any sensitive information. The opponent submitted, in particular, the following evidence:

copies of public records with an administrative character, issued by the competent bodies (Chamber of Handicrafts in Thessaloniki, Police Station Epanomi Thessaloniki, etc.), including documents related to the acquisition and ownership rights concerning the opponent’s company and brand;

case-law provided to illustrate the reputation of the earlier trade mark concluded by Greek authorities in previous judgments, in particular judgment No 17789/2015 of First Instance Court of Thessaloniki and judgment No 4787/2007 of First Instance Court of Athens;

printouts from the opponent’s official website www.hatzifotiou.gr illustrating confectionery goods bearing the relevant trade mark ;

a list with information about the range of products offered by the opponent under the respective trade marks, in particular various sorts of chocolates, pastries, pralines, desserts, ice creams, etc;

printouts from the opponent’s account on Twitter, illustrating the goods offered under the relevant trade mark ;

a report with the monthly statistics (June, 2016) of visitor activities of the opponent’s website in Greek language (concerning the relevant Greek public, respectively);
images of opponent’s facilities featuring the trade mark , in the territory of Greece, as well as of the packing box layout of the opponent’s confectionery products;

physical samples of bags and boxes bearing the mark ;

printouts from opponent’s accounts on Facebook bearing the signs ‘Cholocate Workshop’ and ‘ΕΡΓΑΣΤΗΡΙ ΣΟΚΟΛAΤAΣ’ (in English and in Greek) and a report of the visitors’ activity of the Greek and English Facebook accounts;
communication and invoices (2013 and 2015) concerning the provision of marketing services to the opponent by the agency Create & Art G.P.A. and in relation to the signs ‘cholocate workshop’ and ‘ΕΡΓΑΣΤΗΡΙ ΣΟΚΟΛAΤAΣ’;

communication and invoices (2014) concerning the provision of advertising services by the agency K2 design concerning the sign ‘EST 1946’;

brochures and other promotion materials, partly illustrated as final products of the above mentioned advertising services provided to the opponent;

copies of publications concerning the opponent’s company and trade mark (accompanied by partial translations into English), in particular:

interview with the C.E.O. of the opponent’s company, dated 17/10/2014, published at www.thestival.gr, in which it is stated that ‘The patisseries Hatzifotiou have a history of over a half a century, during which they have donated to Thessaloniki on of its most fabulous delicacies: the wrapped cigarillos.’
an article, dated 28/05/2009, published at www.travelstyle.gr, mentioning, inter alai, the opponent’s brand and products.
extract from publications containing interviews with the CEO of the opponent’s company, published in 2012 at www.wineplus.gr (The Wine Plus newsletter), where the opponent’s confectionery is, inter alia, referred to, in particular as ‘When looking for light yet rich sweet cigarillos, all roads lead to the confectioneries Hatzifotiou. Made with love and care by the specialists in chocolate in this city, we feel conquered by them maybe because, as the owner George Hatzifotiou says ‘refer to tasty memories of our childhood’, all wrapped products are famous and you don’t know what to choose first: cariokes, nougat, croquants, mon amour, marzipan with chocolate and strwawberry, mini wafers […]’.
article, published at the Greek magazine Glow and available online at www.glow.gr, entitled ‘Stories about…sugar’, where various famous Greek patisseries are referred to, including the opponent’s company and the most famous confectionery products of the opponent, the ‘cigarillo’ and the ‘Carioca’.
an article, dated 05/11/2012, published at www.in2life.gr, referring to traditional Greek sweets, inter alia, to the opponent’s ‘cigarillos by Hatzifotiou’, as well as to the confectionery stores and products of the opponent.
an article published at www.protothema.gr, dated 11/12/2014, entitled ‘The creator of cream pies and chants of ‘Guardian’, where part of the article reads: ‘While the average bagel Thessaloniki, the triangle, lived the contempt as simply, humbly, the stereotypical dishes with designation of origin, the famous cigarillo pastry ‘Hatzifotiou’ was about to find its own place in the pantheon of hybrid sweet’.
an publication at www.arteditre.gr on 19/08/2015, illustration processes in the manufacturing of the opponent’s confectionery goods and a packaging bearing the name ‘Χατζηφωτίου‘ written in upper case letters.
an advertising material published at www.grekomania.gr, entitled ‘Hatzifotiou Patisseries’, referred to as ‘Authentic Thessaloniki sweets’.
an indication of the opponent’s company and address at www.7000.gr (dated 05/04/2014), also linking to the opponent’s website.

copies of license agreements concerning the use of the trade name ‘Χατζηφωτίου’;
copies of monthly transactions and recordals concerning the wholesale of the opponent’s confectionery products to customers for the relevant period between 2000 and 2010 (with translation in English provided);

customer trial balance of the opponent’s company for different period between 2011 and 2016 (with translation in English provided);

over 20 copies of invoices bearing the opponent’s mark for the relevant years 2015 and 2016 issued to a client in Greece (with a translation into English) and illustrating a solid amount of sales and turnovers for the relevant period;

copies of editions of The Government Gazette/ Bulletin of the companies containing the annual balance sheet of the opponent for the fiscal years between 2010 and 2015.

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. The solid financial results and examples of marketing expenditure by the evidence and the various references in the press to its success all unequivocally show that the mark enjoys a rather high degree of recognition among the relevant public.

Furthermore, the opponent’s has often been referred to as a pioneer in the manufacturing of particular confectionery products (for example the famous ‘cigarillos’) and this has been particularly attested by the reports containing annual overviews and financial results for past periods, as listed above. Furthermore, the press materials demonstrate that the opponent’s brand has been a serious player on the confectionery market for a quite long time and, although not particularly exhaustive in this respect, they further imply on the opponent’s repute and are sufficient to conclude that the opponent has achieved a significant reputation among the Greek public.

In principle evidence showing that the reputation of the opponent’s mark has been repeatedly recognised and protected against infringing acts by decisions of judicial or administrative authorities will be an important indication that the mark enjoys a reputation in the relevant territory, especially where such decisions are recent. The opponent demonstrated a relatively recent case-law confirmed the reputation of the earlier mark among the Greek public.

In addition, the fact that a mark is solicited by third companies for reproduction on their products, either as a trade mark, or as mere decoration, is a strong indication that the mark possesses a high degree of attractiveness and an important economic value. Therefore, the extent to which the mark is exploited through licensing, merchandising and sponsoring, as well as the importance of the respective schemes, are useful indications in assessing reputation. As referred to by the opponent, the brand is a subject of formal and informal licensing.

On the basis of the above the Opposition Division concludes that the earlier trade mark has a certain degree of a reputation in Greece for confectionery.

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 products of the confectionery, whereas there is no or little reference to the remaining goods. This is clear, for example, from the sales figures, press clips and the advertisements materials, where only the former are mentioned.

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 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.)

In the present case, the signs have been considered to show significant similarities on a visual, aural and conceptual level. Furthermore, a likelihood of confusion was established with respect to part of the contested goods and services, as concluded in the previous section under Article 8(1)(b) EUTMR.

Before examining the possibility of a link, it is appropriate to recall that the opposition is now directed against the following services:

Class 41: publishing of web magazines; publishing services for books and magazines; publication of books (listed twice), magazines (listed twice), almanacs and journals; publishing by electronic means; issue of publications; publication of printed matter relating to education; publication of printed matter (listed twice) and printed publications; publishing of documents; publication of manuals; publication of training manuals; publication of educational teaching materials; services for the publication of newsletters; publication of educational texts; publication of electronic magazines; publication of texts; publication of instructional literature; publication of leaflets; electronic online publication of periodicals and books; providing on-line publications; providing electronic publications; editing of texts (except publicity texts); services for the publication of guide books; publication of electronic books and journals on-line; publication and editing of printed matter; publication and edition of books; organisation of dancing displays; tutoring; rental of videotapes (listed three times); planning (party -) [entertainment]; organisation of webinars; musical events (arranging of -); club services [entertainment or education]; services of schools [education]; education and instruction; preparation of texts for publication; recreation information; production of television and radio programs; production of shows; production of live television programmes for education; organization of balls; organising of festivals; fetes (organisation of -) for educational purposes; arranging and conducting of concerts; organisation of shows; rental of sound recordings; rental of audio equipment; performances (presentation of live -); education and instruction; organisation of seminars; conducting of seminars and congresses; arranging of competitions for educational purposes; arranging of lectures; arrangement of conventions for educational purposes; arranging of conventions for training purposes; arranging of demonstrations for training purposes; arranging and conducting educational conferences; arranging of displays for educational purposes; arranging of displays for training purposes; arranging of seminars relating to trade; organisation of seminars and conferences; arrangement of conferences for educational purposes; arrangement of conferences for recreational purposes; arranging of conferences relating to business; arranging of conferences relating to trade; organization of competitions; arranging of exhibitions for educational purposes; arranging of exhibitions for training purposes; organization of exhibitions for cultural or educational purposes; organising of education exhibitions; organising of competitions for education; arranging of seminars relating to business; arranging and conducting competitions; arranging and conducting of conferences; arranging and conducting of commercial, trade and business conferences; arranging and conducting of seminars; arranging and conducting of congresses; arranging and conducting of symposiums; arranging and conducting conferences and seminars; arrangement of seminars for educational purposes; organisation of seminars relating to training; organisation of meetings and conferences; seminars; conferences and exhibitions for educational or entertainment purposes, and seminars; congresses; rental of video recorders; video equipment hire; hire of sound recording apparatus; rental of tape recording equipment; rental of video cameras; rental of movie projectors and accessories; production of training videos; production of training films; production of audio/visual presentations; videotaping; television, radio and film production; correspondence courses; development of educational materials; dissemination of educational material; conducting of educational courses; conducting instructional courses; arranging teaching programmes; arranging professional workshop and training courses; organisation of training courses; arranging of festivals for training purposes; arranging of festivals for educational purposes; vocational testing; educational seminars; instruction via broadcasting; educational examination; educational services in the nature of correspondence courses; computer education training services; education services relating to nutrition; educational research; educational instruction; vocational retraining; training in the display of food; training relating to sales; training in the handling of food; courses (training -) relating to research and development; organising of commercial training; organising of educational lectures; organisation of symposia relating to education; organising of business training; arranging and conducting of colloquiums; workshops (arranging and conducting of -) [training]; arranging of presentations for educational purposes; organisation of symposia relating to training; organising of meetings in the field of education; organisation of conferences relating to vocational training; provision of instruction courses in general management; provision of training and education; provision of education on-line from a computer database or via the internet or extranets; conducting of courses; provision of training courses; provision of educational information; provision of training courses; information relating to education, provided on-line from a computer database or the internet; training; education information; training (practical -) [demonstration]; vocational guidance; academies [education]; developing educational manuals; training services relating to retail management; commercial training services; vocational training services; sales training services; training services relating to retail marketing; sales training services for retailers; commercial training services; training relating to sales; computer training.

Class 43: wine tasting services (provision of beverages); hiring of rooms for social functions; making reservations and bookings for restaurants and meals; booking of restaurant seats; provision of information relating to bars; provision of information relating to restaurants; provision of information relating to the preparation of food and drink; cookery advice; reservation services for booking meals; contract food services; consultancy services relating to food preparation; consultancy services relating to food; rental of meeting rooms; rental of temporary accommodation; rental of chairs, tables, table linen, glassware.

On the other hand, the opponent’s trade mark was considered reputed for confectionery (Class 30) on the Greek market.

Bearing in mind the nature of the reputed goods, a further connection may be found between confectionery products and some of the contested services in Class 43, as far as they are related to food consumption, preparation, provision or any other activity involving food (including catering or organising of events with provision of catering), in particular for the contested making reservations and bookings for restaurants and meals; booking of restaurant seats; provision of information relating to bars; provision of information relating to restaurants; provision of information relating to the preparation of food and drink; cookery advice; reservation services for booking meals; contract food services; consultancy services relating to food preparation; consultancy services relating to food; rental of chairs, tables, table linen, glassware in Class 43, as well as for the contested education services relating to nutrition; training in the display of food; training in the handling of food in Class 41.

The services in Class 43 listed above, in particular making of reservations, bookings, provision of information and advice, are indispensable of the provision of food and drink. Furthermore, the services in Class 41 are related to training and education in respect to food. It is very likely that by using these services featuring, inter alia, the reputed name ‘Χατζηφωτίου’, the relevant consumer will be naturally triggered to call into mind the opponent’s brand consisting of the same name and known as a manufacturer of foodstuffs. This case scenario will be equally valid in the case of the contested wine tasting services (provision of beverages), as in everyday life wine and chocolate are commonly paired from a gustation prospective and this trend on its own may lead to the coincidence of the goods and services’ publics, whereby the public familiar with the earlier mark will be reminded of it by encountering the contested sign.

Although some of the services are relatively remote, this finding will be outweighed by the fact that the contested sign entirely incorporated the opponent’s mark’s verbal element and, as already established, the public will not simply will be reminded of the opponent’s mark but the distinctive surname that is represents will be easily referable on a visual, aural and conceptual level. Furthermore, since the contested application bears such elements that will allude to the specific goods (cocoa beans, the word ‘chocolates’ will allude to confectionery), this will reinforce the association with the particular area of confectionery and may further serve as a reminder of the opponent’s mark even for more remote services, which would in principle, not hint to the opponent’s mark. Consequently, a mental connection cannot be excluded even for the services that would otherwise not be linked to the opponent’s business activity. 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 for all the above commented services.

However, the remaining contested hiring of rooms for social functions; rental of meeting rooms; rental of temporary accommodation in Class 43 seem to be a way more remote from the business area in which the opponent is operating on the market and the proximity of the business sectors is hardly arguable in those cases. Furthermore, a link between the signs cannot be established also in relation to the remaining services in Class 41, mainly concerning publication, education, training and entertainment, production of educational, cultural and business content, etc.

By a way of an example, the contested publishing of web magazines; publishing services for books and magazines; publication of books (listed twice), magazines (listed twice), almanacs and journals; publishing by electronic means; issue of publications; publication of printed matter (listed twice) and printed publications; publication of manuals; publication of training manuals; services for the publication of newsletters; publication of electronic magazines; publication of texts; publication of instructional literature; publication of leaflets; electronic online publication of periodicals and books; providing on-line publications; providing electronic publications; editing of texts (except publicity texts); services for the publication of guide books; publication of electronic books and journals on-line; publication and editing of printed matter; publication and edition of books; preparation of texts for publication are different publishing services, none of which is specifically referred to cooking or is determined to have a food-related content. Consequently, a natural connection between such publishing services and confectionery products cannot be justified as these two sectors will not overlap in any common aspect.

The contested production of television and radio programs; organising of festivals; organisation of shows; musical events (arranging of -); club services [entertainment or education]; production of shows; arranging and conducting of concerts; organization of competitions; arranging and conducting competitions; planning (party -) [entertainment]; organization of balls; performances (presentation of live -); organisation of dancing displays; recreation information; arrangement of conferences for recreational purposes; organization of exhibitions for cultural purposes; rental of videotapes (listed three times); rental of sound recordings; rental of audio equipment; rental of video recorders; video equipment hire; hire of sound recording apparatus; rental of tape recording equipment; rental of video cameras; rental of movie projectors and accessories are services representing different means of entertainment and education and culture or other related auxiliary services (such as rental of equipment). These are often used by companies to foster the development and recognition of their brands in other relevant commercial fields. Besides they are successful marketing tools (TV, radio and electronic media) that are often used to reach the mass public and create a positive global impression of the signs even over the public that is not necessary the relevant consumers of the products. However, bearing in mind the reputation of the opponent’s goods in the field of confectionery, as well as its strength only in that particular area, such expansion of this is unlikely to occur in relation to the creative industries where different types of public, distribution channels and operating businesses are involved.

Likewise, no link can be seen also between the opponent’s goods and the contested organisation of webinars; arranging of demonstrations for training purposes; tutoring; provision of training; production of training videos; production of training films; production of audio/visual presentations; videotaping; television, radio and film production; correspondence courses; conducting instructional courses; arranging professional workshop and training courses; organisation of training courses; arranging of festivals for training purposes; vocational testing; instruction via broadcasting; vocational retraining; courses (training -) relating to research and development; workshops (arranging and conducting of -) [training]; organisation of conferences relating to vocational training; provision of instruction courses in general management; conducting of courses; provision of training courses (listed twice); training; training (practical -) [demonstration]; vocational guidance; vocational training services; computer training; arranging of seminars relating to trade; arranging of conferences relating to business; arranging of conferences relating to trade; arranging of seminars relating to business; arranging and conducting of conferences; arranging and conducting of commercial, trade and business conferences; conducting of congresses; arranging and conducting of congresses; arranging and conducting of symposiums; arranging and conducting conferences and seminars; organisation of seminars relating to training; organisation of meetings and conferences; seminars; conferences and exhibitions for entertainment purposes, and seminars; congresses; organising of commercial training; organising of business training; arranging and conducting of colloquiums; training relating to sales; organisation of symposia relating to training; training services relating to retail management; commercial training services; sales training services; training services relating to retail marketing; sales training services for retailers; commercial training services; training relating to sales; arranging and conducting of seminars (listed twice); arranging of lectures; organisation of seminars (listed twice) and conferences; arranging of exhibitions for training purposes; publication of printed matter relating to education; publishing of documents; publication of educational teaching materials; publication of educational texts; services of schools [education]; education and instruction (listed twice); production of live television programmes for education; fetes (organisation of -) for educational purposes; arranging of competitions for educational purposes; arrangement of conventions for educational purposes; arranging of conventions for training purposes; arranging and conducting educational conferences; arranging of displays for educational purposes; arranging of displays for training purposes; arrangement of conferences for educational purposes; arranging of exhibitions for educational purposes; organising of education exhibitions; organising of competitions for education; arrangement of seminars for educational purposes; development of educational materials; dissemination of educational material; conducting of educational courses; arranging of festivals for educational purposes; educational seminars; educational examination; educational services in the nature of correspondence courses; computer education training services; educational research; educational instruction; organising of educational lectures; organisation of symposia relating to education; arranging of presentations for educational purposes; organising of meetings in the field of education; provision of education; provision of education on-line from a computer database or via the internet or extranets; provision of educational information; information relating to education, provided on-line from a computer database or the internet; education information; academies [education]; developing educational manuals; arranging teaching programmes; conferences and exhibitions for educational purposes, and seminars; organization of exhibitions for educational purposes; conferences and exhibitions for educational purposes. Since the contested services are various trainings, tutorials, workshops and courses, as well as other practical forms of teaching and delivering educational content, they are related particular business fields and are addressed to professional public with specific business interest. There is a significant gap between these services, where content is delivered, and the opponent’s reputed goods, which are meant for public at large, a possible link between the sectors cannot be really justified for these services, as they do not coincide in any relevant point. 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 for the remaining services commented above. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected, as far as it concerns these services in Classes 41 and 43.

As the remaining services for which a link was found are concerned, 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). The examination will then continue for the services, for which a link has been established.

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 the following:

Even if, one would restrict the reputation of the Opponent’s trademark[s] to the part of the products of the NCI 30 actually used by the Opponent, the protective scope of the Opponent’s trademarks goodwill comprise all products and services of the contested application, as the used without due cause of the contested mark would taken unfair advantage or and be detrimental to the distinctive character or the repute of the earlier trademarks of the Opponent by way of an image transfer in the territory of Greece.

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

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 goodwill and reputation of the opponent’s trade mark is a results of its intensive use, preservation and promotion of the market;

because the earlier mark enjoys a high degree of recognition and goodwill among the relevant public and the immediate image transfer on the contested services in related commercial fields is undisputable;

by encountering the applicant’s services bearing the similar sign, the relevant consumer will be positively influenced to make a purchase choice in favour of the applicant;

the applicant would benefit from the investments in the opponent’s earlier mark since, according to the opponent, the applicant itself has no commercial activity and infrastructure to market the services of the contested application;

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.)

As established by the opponent, the earlier trade mark has been used in relation to various means of communication, advertising and marketing tools, where the opponent has invested solid amounts through the years for the popularising of the brand.

Furthermore, as said, upon encountering the contested sign used for the aforementioned services related to food, drink or catering, the relevant consumer would inevitably make a mental connection with the opponent’s mark featuring the rare and thereof, very distinctive, surname ‘‘Χατζηφωτίου’ and born on the goods offered by the opponent, on account of the reputation of the opponent’s mark. As concluded above, the perception of the contested sign’s will on its own allude to the association of the sign with confectionery products and in such context its entire graphical representation, together with the incorporated opponent’s distinctive verbal element, will ensure the mental connection between the conflicting signs. Due to the common trend of transferring positive image of successful and well-known brands to other commercial sectors, this mental connection might be justified for remoter services such as the contested services in Class 43 related to bookings, catering, consultancy and training related to food and provision of food and drink. It cannot be ruled out that a past positive experience with the earlier mark, which has been demonstrated within the evidence of the opponent, may have a decisive influence on individual consumers’ choice, since consumers may attribute the qualities of the opponent’s goods to the contested services and expect the same, positive, results.

This would give the applicant a competitive advantage in the territory of Greece, where the opponent’s mark is reputed, since its services would benefit from the additional attractiveness they would gain from the association with the opponent’s older mark.

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 for these services for which a link may be established.

Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR insofar as it is directed against the following services:

Class 41: services relating to nutrition; training in the display of food; training in the handling of food

Class 43: wine tasting services (provision of beverages); making reservations and bookings for restaurants and meals; booking of restaurant seats; provision of information relating to bars; provision of information relating to restaurants; provision of information relating to the preparation of food and drink; cookery advice; reservation services for booking meals; contract food services; consultancy services relating to food preparation; consultancy services relating to food; rental of chairs, tables, table linen, glassware

The opposition is not successful insofar as the remaining services are concerned. Therefore, it will proceed under Article 8(4) EUTMR, also invoked by the opponent.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

The opposition is also based on the following non-registered trade marks and signs, in relation to which Article 8(4) EUTMR was invoked by the opponent:

‘ΧΑΤΖΗΦΩΤΙΟΥ, Χατζηφωτίου’ for goods and services in Classes 29, 30 and 35;
‘EST 1946’ or ‘since 1946’ for goods and services in Classes 29, 30 and 35;
‘CHOCOLATE WORKSHOP’ for goods and services in Classes 29, 30 and 35;
‘EXCLUSIVE CHOCOLATE(S)’ for goods and services in Classes 29, 30 and 35;
‘ΕΡΓΑΣΤΗΡΙ ΣΟΚΟΛAΤAΣ’ for goods and services in Classes 29, 30 and 35;
Figurative marks/signs representing ‘drawing of cocoa seeds’ (illustrated by the opponent as elements from the signs and ).

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

Prior use in the course of trade of more than mere local significance

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by preventing an earlier right which is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing registration of a new European Union trade mark. A right of opposition of that kind must be reserved to signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 157, 159, 160, 163 and 166).

Therefore, contrary to what the opponent submits, the fact that a sign confers on its proprietor an exclusive right throughout the national territory is in itself insufficient to prove that it is of more than mere local significance within the meaning of Article 8(4) EUTMR. The requirement of ‘more than local significance’ relates also to the use that is made of the sign on the basis of which the opposition is entered and not only to the geographic area in which the sign may be protected according to the law governing the sign in question (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 156).

The relevant evidence submitted by the opponent was already referred to above in section Reputation. The evidence of use shows that the sign ‘ΧΑΤΖΗΦΩΤΙΟΥ, Χατζηφωτίου’ has been used for confectionery. However, while the evidence suggests that some use of the remaining signs has been made, it does not meet the minimum threshold of ‘more than local significance’ set out in Article 8(4) EUTMR.

A trade sign is of more than mere local significance in the relevant territory when its impact is not confined to a small part of that territory, as is generally the case with a town or a province (24/03/2009, T-318/06 – T-321/06, General Optica, EU:T:2009:77, § 41). The sign must be used in a substantial part of the territory of protection (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 159).

Whether or not a trade sign is of more than mere local significance may be established by demonstrating the existence of a network of economically active branches throughout the relevant territory, but also more simply, for example, by producing invoices issued outside the region in which the proprietor has its principal place of business, press cuttings showing the degree of recognition on the part of the public of the sign relied on or by establishing that there are references to the business establishment in travel guides (24/03/2009, T-318/06 – T-321/06, General Optica, EU:T:2009:77, § 43).

The documents filed and already listed above do not provide the Opposition Division with sufficient information concerning the commercial volume, the duration, and the frequency of use of the non-registered trade marks and signs EST 1946’ or ‘since 1946’, ‘CHOCOLATE WORKSHOP’, ‘EXCLUSIVE CHOCOLATE(S)’, ‘ΕΡΓΑΣΤΗΡΙ ΣΟΚΟΛAΤAΣ’ and the figurative marks/signs representing ‘drawing of cocoa seeds’.

Considering all the above, the Opposition Division concludes that the evidence submitted by the opponent is insufficient to prove that these earlier signs was used in the course of trade of more than local significance in connection with the goods and services on which the opposition was based before the relevant date and in the relevant territory.

As one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded, as far as these earlier rights are concerned. However, the opponent illustrated sufficient use of the trade sign ‘ΧΑΤΖΗΦΩΤΙΟΥ, Χατζηφωτίου’, supported by the evidence, on which was commented above in the section of Reputation. This use was demonstrated in relation to production and retail of confectionery and bakery products (Classes 30 and 35).

The right under the applicable law

Non-registered marks are generally protected against subsequent marks according to the same criteria that are applicable to conflicts between registered marks, namely identity or similarity between the signs, identity or similarity between the goods or services, and the presence of a likelihood of confusion. In these cases, the criteria developed by the courts and by the Office with regard to Article 8(1) EUTMR can be applied mutatis mutandis when examining Article 8(4) EUTMR.

In the present case, according to the law governing the sign in question cited by the opponent, namely Greek Trade mark law (Law No 4072/2012), Article 124(3)(a):

a trademark applied for shall not be registered if it conflicts with a right of an unregistered sign or other distinguishing feature that is used in the course of business and confers to its owner the right to prohibit the used of a subsequent trade mark, provided that the rights to that sign had been acquired prior to the date of application for registration, or the date of priority claimed for the application for registration.

Furthermore, the opponent also bases its claim of the non-registered mark in question on the Greek Unfair Competition Law (Law No 146/1914), Article 13(a), (c) and (d):

Anyone who, in the course of business, makes use of a name, a firm name, or the special designation of a business establishment or of an industrial enterprise, or of a printed work, in a manner capable of causing confusion with the name, firm name, or special designation legitimately used by another, may be enjoined from such use by the latter…Business symbols of a business establishment or an enterprise which are considered within the trade concerned as the distinctive signs of such establishment or enterprise shall be equivalent to the special designation. The special presentation or the special decoration of the goods and the packaging or the covering thereof are assimilated to the special designation, if they are considered within the trade concerned as the distinctive signs of the similar goods of another.

For the purposes of procedural economy, the Opposition Division will assume that the opponent demonstrated its right to prohibit the registration of the subsequent trade mark and has provided to a sufficient extent information about the right conferred, ‘ΧΑΤΖΗΦΩΤΙΟΥ, Χατζηφωτίου’, and the relevant conditions for the protection, in particular the likelihood of confusion as to the origin of the mark.

The opponent’s right vis-à-vis the contested trade mark

Likelihood of confusion

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

1. The goods and services

The opposition is directed against the following services of the contested trade mark:

Class 43: publication of printed matter; publishing of web magazines; publishing services for books and magazines; publication of books, magazines, almanacs and journals; publishing by electronic means; issue of publications; publication of printed matter relating to education; publication of printed matter and printed publications; publishing of documents; publication of manuals; publication of training manuals; publication of educational teaching materials; services for the publication of newsletters; publication of educational texts; publication of electronic magazines; publication of texts; publication of instructional literature; publication of leaflets; publication of magazines; electronic online publication of periodicals and books; providing on-line publications; providing electronic publications; editing of texts (except publicity texts); services for the publication of guide books; publication of electronic books and journals on-line; publication of books; publication and editing of printed matter; publication and edition of books; organisation of dancing displays; tutoring; rental of videotapes; planning (party -) [entertainment]; organisation of webinars; musical events (arranging of -); club services [entertainment or education]; services of schools [education]; education and instruction; preparation of texts for publication; recreation information; production of television and radio programs; production of shows; production of live television programmes for education; organization of balls; organising of festivals; fetes (organisation of -) for educational purposes; arranging and conducting of concerts; organisation of shows; rental of videotapes; rental of sound recordings; rental of audio equipment; performances (presentation of live -); rental of videotapes; education and instruction; organisation of seminars; conducting of seminars and congresses; arranging of competitions for educational purposes; arranging of lectures; arrangement of conventions for educational purposes; arranging of conventions for training purposes; arranging of demonstrations for training purposes; arranging and conducting educational conferences; arranging of displays for educational purposes; arranging of displays for training purposes; arranging of seminars relating to trade; organisation of seminars and conferences; arrangement of conferences for educational purposes; arrangement of conferences for recreational purposes; arranging of conferences relating to business; arranging of conferences relating to trade; organization of competitions; arranging of exhibitions for educational purposes; arranging of exhibitions for training purposes; organization of exhibitions for cultural or educational purposes; organising of education exhibitions; organising of competitions for education; arranging of seminars relating to business; arranging and conducting competitions; arranging and conducting of conferences; arranging and conducting of commercial, trade and business conferences; arranging and conducting of seminars; arranging and conducting of congresses; arranging and conducting of symposiums; arranging and conducting conferences and seminars; arrangement of seminars for educational purposes; organisation of seminars relating to training; organisation of meetings and conferences; seminars; conferences and exhibitions for educational or entertainment purposes, and seminars; congresses; rental of video recorders; video equipment hire; hire of sound recording apparatus; rental of tape recording equipment; rental of video cameras; rental of movie projectors and accessories; production of training videos; production of training films; production of audio/visual presentations; videotaping; television, radio and film production; correspondence courses; development of educational materials; dissemination of educational material; conducting of educational courses; conducting instructional courses; arranging teaching programmes; arranging professional workshop and training courses; organisation of training courses; arranging of festivals for training purposes; arranging of festivals for educational purposes; vocational testing; educational seminars; instruction via broadcasting; educational examination; educational services in the nature of correspondence courses; computer education training services; educational research; educational instruction; vocational retraining; training relating to sales; courses (training -) relating to research and development; organising of commercial training; organising of educational lectures; organisation of symposia relating to education; organising of business training; arranging and conducting of colloquiums; workshops (arranging and conducting of -) [training]; arranging of presentations for educational purposes; organisation of symposia relating to training; organising of meetings in the field of education; organisation of conferences relating to vocational training; provision of instruction courses in general management; provision of training and education; provision of education on-line from a computer database or via the internet or extranets; conducting of courses; provision of training courses; provision of educational information; provision of training courses; information relating to education, provided on-line from a computer database or the internet; training; education information; training (practical -) [demonstration]; vocational guidance; academies [education]; developing educational manuals; training services relating to retail management; commercial training services; vocational training services; sales training services; training services relating to retail marketing; sales training services for retailers; commercial training services; training relating to sales; computer training.

Class 43: hiring of rooms for social functions; rental of meeting rooms; rental of temporary accommodation.

The opponent’s non-registered trade mark is used for: production and retail of confectionery and bakery products (Classes 30 and 35).

Part of the goods and services have already been essentially compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings. Furthermore, as regards the retail of the opponent’s goods, it has to be mentioned that retail usually comprises the bringing together, and offering for sale, a wide variety of different goods, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of any of the contested services that have been referred above several times. These services have different natures and methods of use and furthermore, they do not share their distribution channels or addressed public. Therefore, they are dissimilar.

As seen above, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions is not fulfilled, and the opposition must be rejected, as long as it is based on Article 8(4) EUTMR for the non-registered mark ‘ΧΑΤΖΗΦΩΤΙΟΥ, Χατζηφωτίου’.

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

Volker

MENSING

Patricia

LOPEZ FERNANDEZ DE CORRES

Liliya

YORDANOVA

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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