OPPOSITION No B 2 586 702

Aperitivos Flaper S.A., P.I. Miralcampo, c/ Acero nº 8 Azuqueca de Henares (Guadalajara), 19200 Azuqueca de Henares, Spain (opponent), represented by Lehmann & Fernandez S.L., Calle Alvarez de Baena, 4, 28006 Madrid, Spain (professional representative)

a g a i n s t

Pata S.P.A., Via Maestri del Lavoro 21, 46043 Castiglione delle Stiviere (MN), Italy (applicant), represented by Mondial Marchi S.R.L., Via Olindo Malagodi 1, 44042 Cento (FE), Italy (professional representative).

On 17/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 586 702 is partially upheld, namely for the following contested goods:

Class 29:         Meat, fish; Meat extracts; Preserved, frozen, dried and cooked vegetables; Milk products; Edible oils and fats; Potato chips; Potato flakes; Croquettes; Potato fritters; Low-fat potato chips; Prepared nuts; Ground almonds; Peanuts, prepared; Pickles; Preserved potatoes; French fries; Processed potatoes; Hash browns; potato crisp sticks; Potato chips; Potato-based snack foods; Treated nuts; Processed almonds; canned peanuts; Mashed potato.

Class 30:         Rice; Tapioca and sago; Flour and preparations made from bread, pastry, cereals and confectionery; Edible ices; Sugar, honey, treacle; Yeast, baking-powder; Salt; Mustard; Vinegar, sauces (condiments); Spices; Cereal-based snack food; Rice-based snack food; Popcorn; Cereals; Bread; Tortillas; Pizza; Corn crisps; Tacos (crisps); Cereal flakes; tortilla chips; Tortilla chips (nachos); Extruded corn snacks; Extruded grain snacks; Toffee popcorn; Sweet popcorn; Glazed popcorn; Sweetened popcorn; Puffed cheese balls [corn snacks]; Spiral cheese puffs (snacks made from corn); Puffed corn-based snacks; Extruded wheat snacks; Wheat-based snack foods; Snack foods made from wheat; vanilla pods; Savoury biscuits; Cheese-flavoured corn curls; Cheese-flavoured puffed corn curls; Corn spirals (cheese-flavoured puffed corn curls); Flour and preparations made from cereals; Rigid tortillas for tacos; Enchiladas (filled tortillas seasoned with chilli sauce); Thin breadsticks; Mini bread croutons; Polenta.

2.        European Union trade mark application No 14 172 944 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 172 944. The opposition is based on European Union trade mark registration No 12 520 235 and Spanish trade mark registration No 2 864 395. The opponent invoked Article 8(1)(b) EUTMR.

1. Likelihood of confusion with European Union trade mark registration No 12 520 235

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 12 520 235.

1. The goods

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

Class 29: Processed fruits, fungi and vegetables (including nuts and pulses); Soy-based snack foods; Potato-based snack foods; Onion rings; Bombay mix; Roast chestnuts; Prepared meals containing [principally] bacon; Puffed pork rind; Fish crackers; French fries; Yucca chips; Potato chips; Soy chips; Fruit desserts; Banana chips.

Class 30: Sugars, natural sweeteners, sweet coatings and fillings, bee products; Coffee, teas and cocoa and substitutes therefor; Processed grains, starches, and goods made thereof, baking preparations and yeasts; Baked goods, confectionery, chocolate and desserts; Salts, seasonings, flavourings and condiments; Ready to eat savory snack foods made from maize meal formed by extrusion; Prepared savory foodstuffs made from potato flour; Snack foods made from corn; Snack foods made from wheat; Sesame snacks; Snack foods consisting principally of extruded cereals; Crisps made of cereals; Cereal snack foods flavoured with cheese; Puffed corn snacks; Cheese flavored puffed corn snacks; Tortilla snacks; Snack foods made from corn and in the form of puffs; Snack foods made from corn and in the form of rings; Snack foods made of whole wheat; Snack foods prepared from maize; Snack foods consisting principally of bread; Tortilla chips; Rice biscuits; Pellet-shaped rice crackers (arare); Crackers flavoured with cheese; Crackers flavoured with herbs; Crackers flavoured with spices; Rice crackers; Rice crackers [senbei]; Crackers made of prepared cereals; Crackers filled with cheese; Corn kernels being toasted; Fried corn; Processed unpopped popcorn; Maize, roasted; Flavoured popcorn; Candy coated popcorn; Caramel coated popcorn; Microwave popcorn; Prawn crackers; Mincemeat pies; Wholewheat crisps; Grain-based chips; Snack food products made from cereal flour; Snack food products made from rice flour; Snack food products made from soya flour; Snack food products made from cereal starch; Snack food products made from rusk flour; Snack food products made from maize flour; Snack food products made from potato flour; Snack food products consisting of cereal products.

The contested goods are, after a limitation, the following:

Class 29: Meat, fish, poultry and game; Meat extracts; Preserved, frozen, dried and cooked vegetables; Eggs, milk and milk products; Edible oils and fats; Potato chips; Potato flakes; Croquettes; Potato fritters; Low-fat potato chips; Prepared nuts; Ground almonds; Peanuts, prepared; Pickles; Preserved potatoes; French fries; Processed potatoes; Hash browns; potato crisp sticks; Potato chips; Potato-based snack foods; Treated nuts; Processed almonds; canned peanuts; Mashed potato.

Class 30: Rice; Tapioca and sago; Flour and preparations made from bread, pastry, cereals and confectionery; Edible ices; Sugar, honey, treacle; Yeast, baking-powder; Salt; Mustard; Vinegar, sauces (condiments); Spices; Ice; Cereal-based snack food; Rice-based snack food; Popcorn; Cereals; Bread; Tortillas; Pizza; Corn crisps; Tacos (crisps); Cereal flakes; tortilla chips; Tortilla chips (nachos); Extruded corn snacks; Extruded grain snacks; Toffee popcorn; Sweet popcorn; Glazed popcorn; Sweetened popcorn; Puffed cheese balls [corn snacks]; Spiral cheese puffs (snacks made from corn); Puffed corn-based snacks; Extruded wheat snacks; Wheat-based snack foods; Snack foods made from wheat; vanilla pods; Savoury biscuits; Cheese-flavoured corn curls; Cheese-flavoured puffed corn curls; Corn spirals (cheese-flavoured puffed corn curls); Flour and preparations made from cereals; Rigid tortillas for tacos; Enchiladas (filled tortillas seasoned with chilli sauce); Thin breadsticks; Mini bread croutons; Polenta.

Contested goods in Class 29

Potato chips (mentioned twice in the applicant’s list of goods), French fries and potato-based snack foods are identically included in both lists of goods.

The contested low-fat potato chips are included in the opponent’s broader category of potato chips. Therefore, they are identical.

Taking into account that the expression ‘processed food’ applies to any food that has been altered from its natural state in some way, for either safety reasons or convenience, it has to be considered that the opponent’s broad category of processed vegetables includes the contested preserved, frozen, dried and cooked vegetables. They are therefore identical. Similarly, the contested processed potatoes; preserved potatoes; potato flakes; mashed potato and pickles are included in the opponent’s broad category of processed vegetables.

In the same line, the contested ground almonds; processed almonds; canned peanuts; prepared nuts; peanuts, prepared; treated nuts are included in the opponent’s broad category of processed fruits, fungi and vegetables (including nuts and pulses). These goods are therefore identical.

Moreover, since, on the one hand, the contested croquettes are small amounts of mashed potato or meat rolled in breadcrumbs and fried and, on the other hand, the contested potato fritters; hash browns; potato crisp sticks are different kinds of potato-based snacks, these goods are included in or overlap with the opponent’s broad category of potato-based snack foods. They are thus identical.

As regards the contested meat, the Opposition Division notes that the earlier mark is registered for prepared meals containing [principally] bacon, which are prepared meals made mainly of meat. Taking into account that, in accordance with the case-law of the Court, there is a certain similarity between a particular foodstuff and prepared meals mainly consisting of the same particular foodstuff, these goods are considered similar. They have the same nature, purpose and use, since they all consist of meat products and all target the same end consumers for human consumption (04/05/2011, T-129/09, Apetito, EU:T:2011:193, § 28).

In the same line, considering that fish crackers are deep-fried crackers made from fish and spices, the contested fish is the main ingredient of the opponent’s fish crackers. As these goods have the same nature, purpose and use and all target the same end consumers for human consumption, they are considered similar.

The contested meat extracts are similar to the opponent’s seasonings in Class 30, as they have the same purpose of enhancing flavours. Moreover, they can coincide in their producer, end users and distribution channels. Furthermore, they are in competition.

The contested edible oils and fats are similar to the opponent’s condiments in Class 30. They have the same purpose insofar as all can be used for seasoning other foods. They can coincide in their end users and method of use. Furthermore, they are in competition.

The contested milk products can encompass a large range of goods including drinks, for example a mixture of coffee and milk or of cocoa and milk, which are now common on the market. Since such products offer consumers a ready-made beverage and thus an opportunity to avoid mixing the ingredients themselves, they target the same consumers as, have the same distribution channels as and are in competition with the opponent’s cocoa and coffee. Moreover, it is not unusual for coffee or cocoa producers to offer such products; therefore, they may also have the same producers. It follows from the above that these contested goods are similar to the opponent’s coffee and cocoa.

By contrast, the contested poultry and game; eggs; milk are dissimilar to the opponent’s goods in Classes 29 and 30. Although it has to be acknowledged that all these goods have the same purpose insofar as they all provide nutritional support for organisms, the fact remains that they differ in all their remaining relevant factors. In particular, these contested goods do not have the same specific nature, usual origin or end users as the opponent’s goods. Moreover, even if they are found in the same outlets, the fact remains that they are usually not displayed on the same shelves. Finally, they are neither in competition with nor complementary to each other.

Contested goods in Class 30

The contested honey is included in the opponent’s bee products and therefore they are identical.

Taking into account that baking preparations include different kinds of pre-mixed formulations of ingredients used for the cooking of baked goods, such as different types of flours and/or yeasts, it is considered that the contested baking-powder is included in the opponent’s baking preparations and that the contested flour (listed twice) overlaps with the opponent’s baking preparations. Therefore, these goods are also identical.

The contested confectionery, sugar, yeast, salt tortilla chips, tortilla chips (nachos) and snack foods made from wheat are identically included in the opponent’s list of goods, in spite of a slight difference in wording of some of these goods.

The contested mustard; vinegar, sauces (condiments) and spices fall under the opponent’s broad category of seasonings and condiments and they are therefore identical.

The contested bread; pastry; pizza; savoury biscuits; thin breadsticks; mini bread croutons are included in the opponent’s broad category of baked goods and they are thus identical.

The contested cereals (listed twice) and cereal flakes are included in the broad category of the opponent’s processed grains and goods made thereof. Therefore, they are considered identical.

Likewise, the contested preparations made from bread overlap with the opponent’s snack foods consisting principally of bread. Therefore, these goods are considered identical.

The contested cereal-based snack food and the opponent’s snack food products consisting of cereal products are synonyms. Therefore, they are identical.

The contested rice-based snack food includes, as a broader category, the opponent’s rice crackers. As 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 corn crisps; extruded corn snacks; puffed cheese balls [corn snacks]; spiral cheese puffs (snacks made from corn); puffed corn-based snacks; cheese-flavoured corn curls; cheese-flavoured puffed corn curls; corn spirals (cheese-flavoured puffed corn curls); popcorn; toffee popcorn; sweet popcorn; glazed popcorn; sweetened popcorn; tortillas; tacos (crisps); rigid tortillas for tacos form a homogeneous category of corn-based snacks, since tortillas and tacos may also be based on different cereals, but are mainly and traditionally corn products. On the other hand, the earlier mark covers a wide variety of specific corn-based snack foods as well as the broad category of snack foods made from corn, in which these contested goods are included or with which they overlap. Therefore, they are considered identical.

On the other hand, the contested extruded wheat snacks; wheat-based snack foods are included in the opponent’s broad category of snack foods made from wheat. Therefore, they are also identical.

The contested vanilla pods are a kind of food flavouring and are included in the opponent’s flavourings. Therefore, these goods are identical.

Bearing in mind the definition given above of ‘processed food’, it has to be considered that the contested extruded grain snacks are included in the opponent’s broad category of [processed grains] and goods made thereof. Likewise, since the contested polenta is cornmeal and a dish made of corn, it is also included in the opponent’s [processed grains] and goods made thereof. Therefore, they are identical.

The contested preparations made from cereals overlap with the opponent’s snack food products consisting of cereal products. Therefore, they are identical.

Considering that rice is a cereal, the contested rice is included in the opponent’s broad category of processed grains. Therefore, these goods are considered identical.

The contested tapioca and sago are starches. Therefore, they are included in the opponent’s broad category of starches and they are therefore identical.

The contested edible ices are included in the opponent’s broad category of desserts. Therefore, these goods are identical.

The contested enchiladas (filled tortillas seasoned with chilli sauce) are included in the opponent’s broad category of tortilla snacks. Therefore, they are identical.

The contested treacle is similar to the opponent’s sugar, as they can coincide in their end users and distribution channels. Furthermore, they are in competition.

The contested ice is to be understood as cooling ice, that is, an auxiliary product for preserving and/or cooling foodstuffs. When comparing it with the opponent’s goods in Classes 29 and 30, it appears that they differ in their natures and purposes. They are neither in competition nor complementary, they target different consumers and they are usually manufactured by different kinds of undertakings. Therefore, these goods are dissimilar.

2. 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 found to be identical or similar are directed at the public at large. They consist of foodstuffs that are purchased on a daily basis at a relatively low price. The degree of attention may therefore vary from low to average (26/04/2016, T-21/15, Dino, EU:T:2016:241, § 20).

3. The signs

	FLIPPER
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

The earlier mark is a figurative mark consisting of the verbal elements ‘Aperitivos’ (in brown) and ‘flaper’ (in red) written one above the other in quite a standard typeface, with the word ‘flaper’ larger and occupying a more central position than the word ‘Aperitivos’. These words are placed against a background of a large yellow rhombus, crossed in its lower part by a brown rectangle.

The verbal element ‘Aperitivos’ will be understood by the Spanish-speaking part of the relevant public as a reference to the food and drinks that are eaten prior to a meal. Bearing in mind that the relevant goods are foodstuffs that may be used as appetisers or as ingredients thereof, it is considered that this element is descriptive and non-distinctive in relation to the goods. The word ‘flaper’, however, has no concrete meaning in Spanish and therefore its degree of inherent distinctiveness is normal.

As regards the earlier mark’s figurative elements, the Opposition Division considers that they will not be entirely disregarded; this is because they form an integrated part of the composition of the earlier mark.

Nevertheless, these figurative elements are less distinctive than the word ‘flaper’. It follows from all the above that the element ‘flaper’ is the most distinctive element of the earlier mark.

Moreover, owing to their size and positions within the sign, the word ‘flaper’ and the figurative elements are more eye-catching than and clearly overshadow the element ‘Aperitivos’, which is much smaller, and therefore they are considered co-dominant.

The contested sign is a word mark consisting of the single element ‘FLIPPER’, which has no meaning for the Spanish part of the public and therefore is distinctive.

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

In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public, since the earlier sign includes the word ‘Aperitivos’, which conveys a descriptive meaning in Spanish.

Visually, the signs coincide in the letters ‘FL*P*ER’. They differ in their third letters, that is, ‘A’ in the earlier trade mark and ‘I’ in the contested sign, in the additional letter ‘P’ of the contested sign, which has no counterpart in the earlier mark, and in the word element ‘Aperitivos’ of the earlier trade mark, which has no counterpart in the contested sign. Finally, they also differ in the figurative elements of the earlier mark, which have no equivalents in the contested sign.

However, the element ‘Aperitivos’ is non-distinctive for the Spanish-speaking public and, in principle, figurative elements have a lesser impact in the overall impressions created by signs than their verbal elements, because the public tends to refer to trade marks by their verbal elements rather than by describing their figurative components.

Therefore, the signs remain visually similar, albeit to a lower than average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘FL*(P)PER’. It differs in the sound of the letter ‘I’ of ‘FLIPPER’ versus the letter ‘A’ of ‘FLAPER’, as well as in the additional but non-distinctive element ‘Aperitivos’ of the earlier mark, which has no equivalent in the contested sign. The double ‘P’ of the contested sign will not be pronounced differently by the Spanish-speaking public from the single letter ‘P’ in the earlier mark.

Therefore, in view of the above, it is considered that the signs are aurally similar to an average degree.

Conceptually, it is recalled that neither the contested sign ‘FLIPPER’ nor the earlier mark’s most distinctive element ‘flaper’ has any meaning in the perception of the Spanish-speaking public. Moreover, although the Spanish-speaking public will perceive the meaning of the earlier mark’s element ‘Aperitivos’, as explained above, this element is non-distinctive and therefore the conceptual difference based on this element has no impact on the public’s perception.

It follows from the above that the conceptual comparison has no impact on the similarity between the signs.

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

4. 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.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

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 Spanish-speaking public. Therefore, the distinctiveness of the earlier mark must be seen as normal in spite of the presence of the non-distinctive element ‘Aperitivos’ as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The goods in question in the present case are partly identical and partly similar. Moreover, they consist of foodstuffs that are purchased on a daily basis at a relatively low price, so the degree of attention that consumers display at the time of purchase will vary between low and average.

In that connection, it also has to be recalled 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).

In the light of the above, and bearing in mind their lesser impact than the element ‘FLAPER’ and their non-distinctiveness, it is likely that consumers will not remember the specific graphical depiction of the earlier mark and the additional descriptive indication ‘Aperitivos’. Since they will focus their attention on the distinctive element ‘FLAPER’, it is likely that the Spanish-speaking consumers will remember the earlier mark as ‘FLAPER’. As the contested sign, ‘FLIPPER’, is aurally highly similar to the element ‘FLAPER’ of the earlier mark, it cannot be excluded that, in the context of the foodstuffs in question – during the purchase of which the degree of attention of the public will vary between low and average – consumers will confuse the marks.

Considering all the above, there is a likelihood of confusion on the part of the Spanish-speaking public in the relevant territory. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

However, the opponent has also based its opposition on earlier Spanish trade mark registration No 2 864 395 for the figurative mark  for goods in Class 30. Therefore, an assessment of the existence of a likelihood of confusion with this earlier mark has to be carried out with respect to those contested goods that were found to be dissimilar to the opponent’s goods in the above comparison.

2. Likelihood of confusion with Spanish trade mark registration No 2 864 395

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of one of the trade marks on which the opposition is based, that is, Spanish trade mark registration No 2 864 395.

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 08/07/2015. 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 08/07/2010 to 07/07/2015 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, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 27/04/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 02/07/2016 to submit evidence of use of earlier Spanish trade mark registration No 2 864 395. On 30/06/2016, within the time limit, the opponent submitted evidence of use.

The evidence submitted is the following:

• Invoices: invoices in Spanish and English issued by Aperitivos Flaper S.A., dated at regular intervals between October 2009 and August 2015 and addressed to several recipients in, inter alia, the European Union (Denmark, Germany, Greece, France, Italy, Latvia, Lithuania, Hungary, Portugal, Romania, and the United Kingdom), in particular to various locations in Spain (Valencia, Madrid, Pontevedra, Guadalajara and Badajoz), all bearing the header ‘Aperitivos flaper Snacks and Nuts’. The invoices show sales of fried onions, carrot and beetroot delights, forest fruits, banana chips, potato chips, nuts (almonds, pistachios, macadamia nuts, etc.), pork rinds, popcorn and roasted corn. The prices are expressed in euros.

• Press releases: an article in Spanish published in Sweet Press in 2011, with part of it having been translated. It states the following: ‘ “Aperitivos Flaper” begins in 2011 with optimism after rising nearly 8% in 2010 and to complete a restyling of its brand and range of nuts that will be released in January. Also this year the company plans to do a major investment in machinery’. An article published in DULCES NOTICIAS…y algo más in 2010 also includes pictures of packages of potato chips, dried fruits and pork rinds under the section presenting Aperitivos Flaper’s products.

• Website extracts: an extract from the website www.3.icex.es from which it is apparent that Aperitivos Flaper S.A. had a stand at the trade fair ‘ANUGA’, which took place in Colonia (Germany) from 10/10/2009 to 14/10/2009. The extract also contains several photographs of different kinds of snacks, namely pork rinds, potato chips, dried fruits, dried nuts and popcorn, marketed under the sign ‘Aperitivos flaper’. In extracts from an unknown source, it is also apparent that Aperitivos Flaper S.A. had a stand at the trade fair ‘SIAL’, which took place in Paris in October 2014.

The applicant argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR).

In the present case, considering the nature of the documents that have not been translated and are considered relevant to the present proceedings, that is, invoices and photographs, and having regard to the fact that the sections of the invoices that are not in English either are self-explanatory or were translated into English in the opponent’s observations in reply to the applicant’s observations, the Opposition Division considers that there is no need to request a translation.

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

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

Assessment of the evidence

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).

As regards the place of use, the evidence filed in the present case shows that the earlier mark has been used in several countries within the European Union, inter alia, in Spain. This can be inferred from the language of the documents (inter alia, Spanish), the currency mentioned on the invoices (euros) and the addresses appearing on the invoices (some of which are in Spain). Therefore, the evidence relates to the relevant territory.

Moreover, this conclusion is not called into question by the applicant’s argument that the earlier trade mark is used only for export purposes.

Indeed, the applicant’s argument does not hold true for all the invoices addressed to Spanish recipients and, in any event, according to Article 15(1), second subparagraph, point (b) EUTMR, the following shall also constitute use within the meaning of paragraph 1: affixing of the European Union trade mark to goods or to the packaging thereof in the Union solely for export purposes. This finding must be considered to apply also to national marks.

Therefore, the place of use is proven.

As regards the time of use, the Opposition Division points out that evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use as well during the relevant period of time. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50).

In the present case, although the invoices and the extract from the website www.3.icex.es – from which it is apparent that Aperitivos Flaper S.A. had a stand at the trade fair ‘ANUGA’, which took place from 10/10/2009 to 14/10/2009 – are dated outside the relevant period, they confirm use of the earlier trade mark within the relevant period. Since they bear dates that are prior to the relevant period and are accompanied by, inter alia, several invoices dated within and after the relevant period, they are suitable to confirm use during the five years of the relevant period that the other invoices demonstrate. Therefore, the time of use has been proven.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

Contrary to the applicant’s claim, taken in combination, the invoices, press releases and extracts from third parties’ websites provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration and the frequency of use.

Although, as the applicant points out, the invoices addressed to recipients in Spain do not show significant quantities, it has to be borne in mind that use of the mark need not be quantitatively significant for it to be deemed genuine.

On the other hand, the invoices are dated at regular intervals within the relevant five-year period. Moreover, said invoices show use of the earlier Spanish trade mark registration in several cities in Spain. Therefore, they show use of the earlier mark, which has to be qualified as effective and consistent over time (frequent), in addition to being extensive from the territorial perspective.

Therefore, the fact that the invoices show a low commercial volume is compensated for, in the present case, by other factors.

Indeed, along with the press releases and the extracts from third parties’ websites, said invoices show an outward, regular and constant use of the earlier trade mark across a substantial part of the Spanish territory during the five years of the relevant period.

Therefore, the extent of use is considered proven.

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

In the present case, the evidence of use shows the earlier trade mark as ‘FLAPER’ or as follows:

.

On the other hand, the earlier trade mark is registered as follows:

.

As is apparent from the above depictions, the earlier mark in the figurative form in which it is used differs from the earlier mark in the form in which it was registered only to the extent that the words ‘Snacks & Nuts’ have been added within the rectangle below the elements ‘Aperitios’ and ‘flaper’.

According to settled case-law, if the addition is not distinctive, is weak and/or is not dominant, it does not alter the distinctive character of the registered trade mark (30/11/2009, T-353/07, Coloris, EU:T:2009:475, § 29-33 et seq.; 10/06/2010, T-482/08, Atlas Transport, EU:T:2010:229, § 36 et seq.).

Considering that the addition ‘Snacks & Nuts’ is neither dominant (but rather is secondary) nor distinctive (the goods in question being snacks and nuts, and the Spanish-speaking public will understand these additional words), the Opposition Division considers that the earlier mark has been used in a form that does not alter its distinctive character.

The same conclusion applies to the word form in which the earlier mark has been used in the lists of products on the invoices. As mentioned in section c) of this decision, the word ‘flaper’ is the most distinctive element of the earlier mark and therefore the omission of the figurative element and the descriptive word ‘Aperitivos’ does not alter the distinctive character of the earlier mark. In addition, the word mark ‘FLAPER’ is always accompanied by the figurative version of the mark at the top of each invoice.

Furthermore, the applicant claims, in essence, that the earlier mark has been used as a company name, since the invoices show that some of the opponent’s goods are sold under different brands and, in support of its claim, it submits evidence showing that the opponent is the owner of these trade marks.

In that connection, the Opposition Division recalls that the opponent has to show that the mark has been used as a trade mark on the market. In general, this is not the case when the business name appears on the back of a catalogue or as an incidental indication on a label (18/01/2011, T-382/08, Vogue, EU:T:2011:9, § 47).

However, the use of a sign as a business, company or trade name can be regarded as trade mark use provided that the relevant goods or services themselves are identified and offered on the market under this sign (13/04/2011,T-209/09, Alder Capital, EU:T:2011:169, § 55-56). Moreover, as the opponent underlines, several signs may be used simultaneously without altering the distinctive character of the registered sign (08/12/2005, T-29/04, Cristal Castellblanch, EU:T:2005:438, § 34).

In the present case, irrespective of the fact that other trade marks may have been used simultaneously with the opponent’s earlier mark, it is apparent from the evidence, such as the invoices and other supporting documents, that there is a clear link between the use of the mark and at least some of the relevant goods. In fact, the evidence shows that the sign in question has been used on the Spanish market as a trade mark to designate several kinds of snacks, including cereal, vegetable and fruit snacks, and nuts.

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, which are 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 in Class 30.

In particular, the evidence of use refers, inter alia, to goods such as processed fruits or dried fruits (e.g. banana chips), vegetables (e.g. potato chips), nuts (e.g. almonds, pistachios) and pork rinds. These goods clearly belong to Class 29 and thus do not fall within any of the categories for which the earlier mark is registered in Class 30 and for which use is assessed.

On the other hand, as mentioned above, the evidence also shows use for various snacks made from cereals, such as ‘cone shaped corn snacks’, ‘flute shaped crisp snack’, ‘popcorn’, etc.

According to Article 42(2) and (3) 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.

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

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

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

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

In the present case, the evidence proves use only for different kinds of cereal snacks, mainly corn snacks. These goods can be considered to form an objective and coherent subcategory of the opponent’s very broad category of preparations made from cereals in Class 30, namely snacks made from cereals. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark for snacks made from cereals.

However, the opponent has not submitted any evidence at all in relation to the remaining goods in Class 30, namely coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour; bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

In the light of the above, the Opposition Division concludes that, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory for snacks made from cereals in Class 30.

Therefore, the Opposition Division will only consider the opponent’s snacks made from cereals in its further examination of the opposition.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

1. The goods

The goods for which genuine use was proven and therefore on which the opposition is based are the following:

Class 30: Snacks made from cereals.

The remaining contested goods are the following:

Class 29: Poultry and game; Eggs; Milk.

Class 30: Ice.

Contested goods in Class 29

The contested poultry and game; eggs; milk have nothing in common with the snacks made from cereals for which use of the earlier mark has been proven. As observed above, although they have the same purpose insofar as they all provide nutritional support for organisms, the fact remains that they differ in all their remaining relevant factors. In particular, these contested goods do not have the same specific nature, usual origin or end user as the opponent’s snacks made from cereals. Moreover, these goods are neither in competition with each other nor complementary to each other. Therefore, they are dissimilar.

Contested goods in Class 30

The contested ice has nothing in common with the opponent’s snacks made from cereals. As explained above, the contested ice is to be understood as cooling ice. The contested ice and the opponent’s snacks made from cereals differ in their natures, methods of use and purposes. They are neither in competition nor complementary and they are usually manufactured by different undertakings. Therefore, they are dissimilar.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the remaining contested goods are also dissimilar to the goods protected by earlier Spanish trade mark registration No 2 864 395 for the figurative mark , one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected for these remaining contested goods.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Marianna KONDAS

Marine DARTEYRE

Zuzanna STOJKOWICZ

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.