OPPOSITION No B 2 485 285
Sánchez Cano, S.A., Crta. Madrid, Km. 385, 30500 Molina del Segura (Murcia), Spain (opponent), represented by Garrigues IP, S.L.P, C/ San Fernando 57, 03001 Alicante, Spain (professional representative)
a g a i n s t
Hypermarcas S.A., Rua Nova Cidade, 404 Vila Olímpia, São Paulo SP, Brazil (applicant), represented by Metroconsult S.R.L., Via Foro Buonaparte 51, 20121 Milano, Italy (professional representative).
On 06/03/2017, the Opposition Division takes the following
1. Opposition No B 2 485 285 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against all the goods of European Union trade mark application No 13 738 976. The opposition is based on, inter alia, Spanish trade mark No 2 666 781. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent shall furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.
The same provision states that, in the absence of such proof, the opposition shall be rejected.
The applicant requested that the opponent submit proof of use of Spanish trade mark No 2 666 781 and the EU trade marks No 8 402 241 and No 4 897 609 on which the opposition is based.
The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.
The contested application was published on 18/02/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 18/02/2010 to 17/02/2015 inclusive.
Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:
Class 30: Coffee, tea, cocoa, sugar, rice; tapioca, sago; artificial coffee; flour and preparations made from cereals; bread, pastry and confectionery; edible ices; sugar, honey, treacle; yeast, baking powder; salt; mustard; vinegar, sauces (condiments); spices; ice; candy, chewing gum, sweets.
According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.
On 01/03/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 06/05/2016 to submit evidence of use of the earlier trade mark.
On 07/10/2015 and 05/05/2016, within the time limit, the opponent submitted evidence of use.
The evidence to be taken into account is, in particular, the following:
- A market study issued by the company Nielsen in relation to market share by value and by volume in the Spanish candy sector in 2014. According to this study, the opponent’s company’ occupies the third position.
- Two market studies issued by Alimarket. One of these studies relates to the volume of business of the main companies in the Spanish candy and chewing gum sector in 2011, 2012 and 2013. The other market study classifies major exporters by volume of business in the Spanish candy and chewing gum sector in 2011 and 2012.
- Two affidavits, duly signed on October 2015 by Mr José Ignacio Tomás y Garrido, a representative of the opponent, Sánchez Cano. One affidavit includes turnover figures for products bearing the trade mark ‘FINI’ in the years 2011 to 2015. The figures vary from EUR 61 967 142 (2015) to EUR 87 856 972 (2014). The other affidavit states that the opponent’s company has been granted the quality certification ‘BRC Certification, global standard for food safety, IFS, ISO22000, HALAL Food Certification’.
- Newspaper advertisements and articles, magazine covers and publicity materials displaying the mark in question for candy products in Spain; these materials date from 1996, 2001, 2005, 2010 and 2013. Celebrities such as Maria Sharapova can be seen advertising the opponent’s products. Several photographs of ‘FINI’ products and stores bearing the trade mark are included.
- A brochure showing the opponent’s range of candy products, in Spanish. The trade mark ‘FINI’ can be seen in this evidence.
- Many invoices addressed to companies located in different places in Spain (Melilla, Tarragona, Cadiz, Burgos, Alicante, Almeria, etc.), from Fini Golosinas España S.L.U. The amounts on the invoices vary from EUR 180.98 to EUR 12 037.66 and the products listed are types of candy (‘gusanos pica’, ‘osos neon’, ‘ladrillos fresa’, etc.). The invoices are dated in 2014 and 2015.
- A report issued by Google Analytics indicating the use of the opponent’s website www.fini.es between September 2014 and October 2015.
The opponent submitted several invoices relating to large quantities of goods, addressed to customers in several cities in Spain. Furthermore, the opponent submitted dated brochures, press cuttings and advertisements. The market studies submitted give a general overview of the opponent’s overall commercial and financial activities.
The invoices show that the place of use is Spain. This can be inferred from the language of the documents, the currency mentioned (euros) and the addresses of many customers in Spain. Therefore, the evidence relates to the relevant territory.
Moreover, most of the evidence is dated within the relevant period.
The documents filed provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.
The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).
Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.
However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.
According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.
In the present case, the evidence shows genuine use of the trade mark for the following goods:
Class 30: Candies.
Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
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 Spanish trade mark registration No 2 666 781.
- The goods
The goods on which the opposition is based are the following:
Class 30: Candies.
The contested goods are the following:
Class 1: Artificial sweeteners.
Class 30: Natural sweeteners.
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.
The contested goods do not have a sufficient connection to the opponent’s goods, which are sweets. Their natures, purposes and methods of use are different, and they also differ in their producers, end users and distribution channels. Finally, these goods are not complementary and are not in competition. Therefore, these goods are dissimilar. Although they are foodstuffs that might be found in the same kinds of shops, they are usually placed in different sections. The fact that the opponent’s goods can be ingredients of the contested goods is not sufficient for a finding of similarity.
According to Article 8(1)(b) EUTMR, the similarity of the goods and services is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.
This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the goods cannot be overcome by the highly distinctive character of the earlier trade mark the evidence submitted by the opponent in this respect does not alter the outcome reached above.
REPUTATION – ARTICLE 8(5) EUTMR
For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier Spanish trade mark No 2 666 781, for which the opponent claimed repute in Spain.
According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall 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
Earlier trade mark
The relevant territory is Spain.
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 earlier mark is a figurative mark depicting the letters ‘FINI’ in white on a blue oval shape. It also contains some circles in various colours at the top of the mark. The contested sign is the word mark ‘FINN’.
Neither of the signs contains elements that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements. This is because the contested sign is a simple word mark and the earlier mark is composed of the letters ‘FINI’ and figurative elements that are manifestly simple and of a decorative nature.
When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).
The first parts of the conflicting marks are identical (‘FIN’). Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.
Visually, the signs coincide in the letters ‘FIN*’. However, they differ in the final letter, ‘N’, of the contested sign and the final letter, ‘I’, and the figurative elements, stylisation and colours of the earlier mark.
Therefore, the signs are visually similar to an average degree.
Aurally, the earlier mark will be pronounced as [fini] and the contested sign as [fin], as the double N would go unnoticed in Spanish. As a consequence, the pronunciation of the signs coincides in the sound of the letters ‘FIN’, present in both signs. The pronunciation differs in the sound of the letter ‛I’ of the earlier sign, which has no counterpart in the contested mark.
Therefore, the signs are aurally highly similar.
Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
Taking into account the abovementioned coincidences, the signs under comparison are similar to a certain degree.
- Reputation of the earlier trade mark
The evidence submitted by the opponent to prove the reputation and the highly distinctive character of the earlier trade mark has already been listed above under ‘Proof of use’. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.
According to the opponent, the earlier trade mark has a reputation in Spain.
Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.
In the present case the contested trade mark was filed on 13/02/2015. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Spain prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely candies in Class 30.
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.
For a mark to have a reputation, it must be recognised by a significant part of the relevant public. In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including whether it does or does not contain an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public that, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 23).
In the present case, the documents submitted demonstrate that the opponent’s company is a Spanish company that has made significant investment in its marks and has some presence on the market. However, for a finding of reputation, not only does use of the mark have to be shown, but a certain threshold of use, in terms of the relevant public’s knowledge of the mark, must also be reached. What is important is the public awareness of the mark, rather than the availability of goods.
The evidence is not sufficiently clear and convincing in this regard, as the opponent did not clearly establish all the facts necessary for it to be safely concluded that the earlier mark is known by a significant part of the public. Regarding the invoices and the advertising and promotional material submitted by the opponent, this kind of evidence cannot prove reputation on its own, because it cannot give much information about the actual public awareness of the trade mark. While this evidence demonstrates long-term use and a position in the Spanish market, it provides no further indications with regard to reputation, such as could have been provided by market share data or surveys.
Therefore, based on the evidence submitted by the opponent, there are insufficient indications demonstrating the actual level of awareness on the part of the target consumers to allow a positive finding of reputation.
As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected. As regards the opponent´s EU trade marks No 8 402 241 and No 4 897 609, they cover the same goods. Therefore, the outcome cannot be different. The opposition must also fail insofar as based on these earlier rights.
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Cristina CRESPO MOLTÓ
José Antonio GARRIDO OTALOA
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.