OPPOSITION No B 2 607 250

FrieslandCampina Nederland B.V., Stationsplein 4, 3818 LE Amersfoort, Netherlands (opponent), represented by Chiever BV, Barbara Strozzilaan 201, 1083 HN Amsterdam, Netherlands (professional representative)

a g a i n s t

Giovanni del Missier, Via Deveacco 52, 33030 Majano (Udine), Italy (applicant), represented by Bugnion S.P.A., Via Pancaldo 68, 37138 Verona, Italy (professional representative).

On 28/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 607 250 is partially upheld, namely for the following contested goods and services:

Class 29:        Casseroles [food]; Casserole cooked food based on potatoes and cheese; Food products based on potatoes and cheese; Crispy cheese waffles; Potato fritters; Omelets; Hash brown potatoes; Rosti [fried grated potato cakes]; Potato-based snack foods; Potato snacks; Potato pancakes.

Class 30:        Salted tarts.

Class 35:        Retail services relating to food; all the services listed above in relation to casseroles (food), casserole cooked food based on potatoes and cheese, food products based on potatoes and cheese, crispy cheese waffles, hash brown potatoes, rosti (fried grated potato cakes), potato-based snack foods, potato snacks, potato pancakes, salted tarts.

Class 43:        Providing food and drink catering services for fair and exhibition facilities; Outside catering services; Catering services for the provision of food; Providing food and drink in restaurants and bars;  Food preparation services;  Bar services; Cafés; Mobile catering services; Restaurants; Serving food and drinks; Mobile restaurant services; Self-service restaurants; Snack-bars; All the services listed above in relation to casseroles (food), casserole cooked food based on potatoes and cheese waffles, hash brown potatoes, rosti (fried grated potato cakes), potato-based snack foods, potato snacks, potato pancakes, salted tarts.

2.        European Union trade mark application No 14 426 704 is rejected for all the above goods and services. It may proceed for the remaining services.

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 14 426 704 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 1 564 327 for the figurative mark . The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

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 1 564 327.

1. The goods and services

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

Class 5:        Dietetic substances adapted for medical use, food for babies; lactose.

Class 29:        Preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; milk and milk products, including those combined with other products (in which milk and milk products are the principal ingredients) and their substitutes and preparations made from such products not included in other classes, among other cheese and cheese products; edible oils and fats.

Class 30:        Coffee, cocoa, sugar, rice, tapioca, sago; preparations (mainly) based on these products, among other chocolate flavoured milk beverages and coffee beverages, as well as preparations therefor; flour and preparations made from cereals and foodstuffs prepared from these products; pastries and confectionery, ices, as well as powders for preparation thereof; preparations (mainly) based on honey, among other non-alcoholic honey drinks, as well as preparations therefor, not included in other classes; sauces (condiments).

The contested goods and services are the following:

Class 29:        Casseroles [food]; Casserole cooked food based on potatoes and cheese; Food products based on potatoes and cheese; Crispy cheese waffles;  Potato fritters; Omelets; Hash brown potatoes; Rosti [fried grated potato cakes]; Potato-based snack foods; Potato snacks; Potato pancakes.

Class 30:        Salted tarts.

Class 35:        Administration of the business affairs of retail stores; Business management for shops; Retail services relating to food;  Arranging of presentations for business purposes; All the services listed above in relation to casseroles (food), casserole cooked food based on potatoes and cheese, food products based on potatoes and cheese, crispy cheese waffles, omelets, hash brown potatoes, rosti (fried grated potato cakes), potato-based snack foods, potato snacks, potato pancakes, salted tarts.

Class 43:        Providing food and drink catering services for fair and exhibition facilities; Outside catering services; Catering services for the provision of food; Providing food and drink in restaurants and bars;  Food preparation services;  Bar services; Cafés; Mobile catering services; Restaurants; Serving food and drinks; Mobile restaurant services; Self-service restaurants; Snack-bars; All the services listed above in relation to casseroles (food), casserole cooked food based on potatoes and cheese waffles, omelets, hash brown potatoes, rosti (fried grated potato cakes), potato-based snack foods, potato snacks, potato pancakes, salted tarts.

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

The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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

Contested goods in Class 29

The contested potato fritters; hash brown potatoes; rosti [fried grated potato cakes]; potato-based snack foods; potato snacks; potato pancakes are dishes consisting of cooked potatoes. They are included in the broad category of the opponent’s cooked vegetables and are, therefore, identical to them.

The contested casseroles [food] refer to a dish cooked and served in a casserole (see Oxford English Dictionary) and overlap with the opponent´s cooked vegetables. Therefore, these goods are identical.

The contested casserole cooked food based on potatoes and cheese; food products based on potatoes and cheese and crispy cheese waffles include also such products in which cheese (being a milk product) may be the main ingredient. These contested goods overlap with and are identical to the opponent´s preparations made from such products [milk and milk products, including those combined with other products (in which milk and milk products are the principal ingredients)] not included in other classes.

The contested omelettes are similar to the opponent’s preparations made from such products [milk and milk products, including those combined with other products (in which milk and milk products are the principal ingredients)] not included in other classes since these goods may coincide in their manufacturers, end users and distribution channels. Furthermore, they have the same purpose and may be used in combination or even be to a certain extent in competition with each other.

Contested goods in Class 30

The contested salted tarts are included in the broad category of the opponent’s pastries. Therefore, they are identical.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

The Opposition Division takes note that the applicant’s specification in Class 35 contains the restriction all the services listed above in relation to casseroles (food), casserole cooked food based on potatoes and cheese, food products based on potatoes and cheese, crispy cheese waffles, omelets, hash brown potatoes, rosti (fried grated potato cakes), potato-based snack foods, potato snacks, potato pancakes, salted tarts meaning that the applicant’s retail services relating to food are limited to the goods listed in the restriction. These listed goods were already compared above to the opponent’s goods and all of them, with the exception of omelettes, were found to be identical to goods covered by the earlier mark.

Consequently, the contested retail services relating to food; all the services listed above in relation to casseroles (food), casserole cooked food based on potatoes and cheese, food products based on potatoes and cheese, crispy cheese waffles, hash brown potatoes, rosti (fried grated potato cakes), potato-based snack foods, potato snacks, potato pancakes, salted tarts are similar to a low degree respectively to the opponent’s cooked vegetables, preparations made from such products [milk and milk products, including those combined with other products (in which milk and milk products are the principal ingredients)] not included in other classes and pastries.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in relation to the contested retail services relating to food; all the services listed above in relation omeletes since, as seen from the comparison above, the goods at issue are not identical.

Therefore, the contested retail services relating to food; all the services listed above in relation to omeletes and all of the opponent’s goods are dissimilar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

The contested administration of the business affairs of retail stores; business management for shops; arranging of presentations for business purposes; all the services listed above in relation to casseroles (food), casserole cooked food based on potatoes and cheese, food products based on potatoes and cheese, crispy cheese waffles, omelets, hash brown potatoes, rosti (fried grated potato cakes), potato-based snack foods, potato snacks, potato pancakes, salted tarts are services to support other businesses. Business administration services are performed in order to organise and run a business, whereas business management follows a higher approach aimed at setting the common goals and the strategic plan for a commercial enterprise. Arranging of presentations for business purposes are a type of advertising services which are aimed at providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Therefore, despite the restriction at the end of the list of the applicant’s services, these contested services are dissimilar to all the opponent’s goods, because they differ in nature, purpose, usual origins, distribution channels and relevant public. They are neither in competition nor are complementary to each other.

Contested services in Class 43

The contested services in Class 43 cover the provision of food and drink, services of a restaurant or similar services, such as catering, cafeterias and snack bars. These services are intended to serve food and drinks directly for consumption. The mere fact that food and drinks are consumed in a restaurant is not sufficient reason to find similarity between them (judgment of 09/03/2005, T-33/03, Hai, EU:T:2005:89, § 45 and decision of 20/10/2011, R 1976/2010-4, THAI SPA / SPA et al., § 24-26). Nevertheless, in certain situations these goods and services can be complementary (judgments of 17/03/2015, T-611/11, Manea Spa, EU:T:2015:152, § 52; 15/02/2011, T-213/09, Yorma’s, EU:T:2011:37, § 46) in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking.

At this point, the Opposition Division notes that the applicant’s specification in Class 43 also contains the restriction all the services listed above in relation to casseroles (food), casserole cooked food based on potatoes and cheese waffles, omelets, hash brown potatoes, rosti (fried grated potato cakes), potato-based snack foods, potato snacks, potato pancakes, salted tarts.

Consequently, the Opposition Division is of the opinion that the contested providing food and drink catering services for fair and exhibition facilities; outside catering services; catering services for the provision of food; providing food and drink in restaurants and bars; food preparation services; bar services; cafés; mobile catering services; restaurants; serving food and drinks; mobile restaurant services; self-service restaurants; snack-bars; all the services listed above in relation to casseroles (food), casserole cooked food based on potatoes and cheese waffles, hash brown potatoes, rosti (fried grated potato cakes), potato-based snack foods, potato snacks, potato pancakes, salted tarts are lowly similar to the respective goods that were found to be identical to the goods listed in the restriction, namely to the opponent’s cooked vegetables, preparations made from such products [milk and milk products, including those combined with other products (in which milk and milk products are the principal ingredients)] not included in other classes and pastries because they might coincide in usual origin, distribution channels and are complementary to each other.

However, no complementarity relation can be established between any of the opponent’s goods and the contested providing food and drink catering services for fair and exhibition facilities; outside catering services; catering services for the provision of food; providing food and drink in restaurants and bars; food preparation services;  bar services; cafés; mobile catering services; restaurants; serving food and drinks; mobile restaurant services; self-service restaurants; snack-bars; all the services listed above in relation to omelets. Therefore, these contested services and all the opponent’s 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 and services found to be identical or similar to various degrees are directed at the public at large. The degree of attention is considered to be average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

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

The common element ‘Frico’ is not meaningful, for example, for the English-, German-, French- or Polish-speaking public. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-, German-, French- and Polish-speaking public.

The earlier mark is a figurative mark comprising the verbal element ‘Frico’ depicted in a bold black slightly stylised typeface. The said element will not be associated with a meaning by the relevant public and is, therefore, normally distinctive. The earlier mark includes further verbal and figurative elements, however, the figurative elements (resembling a background oval, a coat of arms in front of a vertical band, etc.) are of rather ornamental nature. Furthermore, 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). Consequently, the verbal element ‘Frico’ is more distinctive than the figurative elements of the earlier mark.

Furthermore, on top of the verbal element ‘Frico’, there is a black square with further figurative elements and the words ‘ANNO 1898’. However, these elements, due to their size and in the context of the other elements of the earlier mark, are not clearly legible and are parts of a rather complex sign, so that they are barely perceptible. These elements are considered negligible and as they are very likely to be disregarded by the relevant public, they will not be further taken into consideration.

The contested sign is also a figurative mark comprising the meaningless and hence distinctive word ‘FRICO’ in bold upper case brown letters and below it in a smaller size the words ‘di Carpacco’ depicted in yellow. The words ‘di Carpacco’, also considering the relevant food-related goods and services, may be seen by a part of the public as a misspelling of ‘carpaccio’, that is the Italian hors d'oeuvre consisting of thin slices of raw beef or fish served with a sauce. In such case the distinctiveness of these elements will be limited. However, for a part of the public these elements will be seen as coined words and their distinctiveness will be, consequently, average.

The letter ‘O’ of the word ‘FRICO’ is represented as a frying pan. Again, considering the relevant goods and services, the Opposition Division is of the opinion that the relevant public will perceive this element as referring to the manner of preparation of food rather than as an indicator of commercial origin. Therefore, the impact of this element on the overall impression of the contested sign will be limited.

The conflicting signs have no element that could be considered more dominant (visually eye-catching) than other elements

Visually, the signs coincide in the distinctive element ‘Frico’. However, they differ in the further verbal and/or figurative elements of the conflicting signs. Considering that ‘Frico’ is the most distinctive element of the earlier mark (and of the contested sign, for a part of the public) as well as that it is the first element of the contested sign (when reading from top to bottom), the Opposition Division finds that the signs are visually similar to at least an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the distinctive element ‛Frico’, present identically in both signs. The pronunciation differs in the sound of the additional verbal elements of the contested sign, ‘di Carpacco’ which are, however, of limited distinctiveness for a part of the public. Therefore, the signs are also aurally similar to at least an average degree. 

Conceptually, as explained above, the coinciding distinctive element ‘Frico’ will not be associated with a meaning. Bearing in mind the presence of additional elements in the marks albeit (some of them) of limited distinctiveness, it is concluded that the signs are not conceptually similar.

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

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.

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.

5. Global assessment, other arguments and conclusion

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).

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.

The goods and services in question are partly identical, partly similar to varying degrees and partly dissimilar and the distinctiveness of the earlier mark is normal.

In the present case, the conflicting sign were found to be similar on account of the common distinctive element ‘Frico’. Although both signs comprise further elements, ‘Frico’ is the only relevant verbal element and, furthermore, the most distinctive element in the earlier mark and the first element in the contested sign. Therefore, the Opposition Division is of the view that the differences between the signs are not sufficient to safely rule out likelihood of confusion for the relevant public, which, furthermore, will not display a heightened degree of attention. This is even more so the case with regard to the part of the public that would perceive the additional verbal elements of the contested sign, ‘di Carpacco’, as being of limited distinctiveness.

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 that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-, German-, French- and Polish-speaking public  and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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 and services found to be identical or similar (including to a low degree) 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 extensive use and 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 the following earlier trade marks:

• European Union trade mark registration No 435 727 for the word mark ‘FRICO’.

• European Union trade mark registration No 6 569 693 for the figurative mark .

• European Union trade mark registration No 6 569 602 for the figurative mark .

Since these marks cover 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.

REPUTATION – ARTICLE 8(5) EUTMR

The opponent claimed repute in the European Union for all of its earlier European Union trade mark registrations on which the opposition is based.

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.

1. Reputation of the earlier trade mark

According to the opponent, the earlier trade marks have a reputation in the European Union.

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 31/07/2015. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union 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:

European Union trade mark registration No 435 727:

Class 29:        Milk and milk products; edible oils and fats.

Class 30:        Cocoa, sugar, rice, tapioca, sago; products made of cocoa or chocolate, except sweets and soft drink powders; flour and preparations made from cereals and farinaceous foods, except sweets and soft drink powders.

European Union trade mark registration No 6 569 693:

 

Class 29:                Cheese and cheese products.

European Union trade mark registration No 1 564 327:

 

Class 5:        Dietetic substances adapted for medical use, food for babies; lactose.        

Class 29:        Preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; milk and milk products, including those combined with other products (in which milk and milk products are the principal ingredients) and their substitutes and preparations made from such products not included in other classes, among other cheese and cheese products; edible oils and fats.        

Class 30:        Coffee, cocoa, sugar, rice, tapioca, sago; preparations (mainly) based on these products, among other chocolate flavoured milk beverages and coffee beverages, as well as preparations therefor; flour and preparations made from cereals and foodstuffs prepared from these products; pastries and confectionery, ices, as well as powders for preparation thereof; preparations (mainly) based on honey, among other non-alcoholic honey drinks, as well as preparations therefor, not included in other classes; sauces (condiments).        

 

European Union trade mark registration No 6 569 602:

Class 29:        Cheese and cheese products.        

In its submissions of 22/04/2016 the opponent clarifies that the reputation claim is limited to use of the earlier marks for cheese and cheese products in Germany.

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 22/04/2016 the opponent submitted evidence to support this claim.

The Opposition Division points out that a part of the documents submitted by the opponent are not in the language of the proceedings (English).

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party shall provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that 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.

According to Rule 19(3) EUTMIR, the information and evidence referred to in paragraphs 1 and 2 shall be in the language of the proceedings or accompanied by a translation. The translation shall be submitted within the time limit specified for submitting the original document.

The opponent did not submit the necessary translations for Annexes 8, 9, 11, 13, 14, 15, 16, 17, 18, page 93 of Annex 19, Annexes 20, 21 (for the latter two documents the opponent provided in its submissions just a translation of the introductions) and Annex 22. These documents contain a relevant amount of text and are not self-explanatory.

Regarding Annex 11, although the opponent provided a partial translation in its observations, however, this is not sufficient since the remainder of the document has not been translated and consequently the non-translated part cannot be taken into consideration.  

According to Rule 19(4) EUTMIR, the Office shall not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

Given that the abovementioned evidence cannot be taken into account, the examination of the opposition continues in relation to the remaining submitted evidence.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence, which is either in the language of proceedings or is self-explanatory and consequently can be taken into account, is the following:

• Annex 1: Certificate issued by a Notary regarding the change of name of the opponent and that it is a registered company.

• Annex 2: Diagram with the legal structure of the opponent as per 01/01/2016.

• Annex 3: Undated excerpt from the opponent’s web site regarding the worldwide distribution of the opponent’s goods, its annual revenue and the particular goods it produces.

• Annex 4: Table dated 20/04/2016 with a large number of trade marks containing the verbal element ‘FRICO’ protected in numerous countries.

• Annex 5: Excerpt from the database of the Benelux Office for Intellectual Property made on 10/03/2016 in relation to the word mark ‘FRICO’. Although the certificate shows that the word mark has been in use since 1898 in The Netherlands, it protects a wide variety of goods and it is not mentioned for which of these goods the trade mark was used for.

• Annex 6: Undated excerpt from the opponent’s web site regarding the use of the trade mark ‘FRICO’ since 1898 for cheese. It also mentions some of the countries where the opponent’s goods are sold as well as excerpt from the opponent’s web site dated on 10/03/2016 regarding the history and evolution of Frico cheeses. It states that this brand was not firstly used in 1989, but in the 1930s. It also mentions countries outside the European Union in which the opponent’s goods are distributed. Photographs with cheeses and different signs including the word ‘FRICO’ appear.

• Annex 7: Images of the website www.frico.de. The period March-April 2016 is displayed and there is an image of a cheese bearing a figurative sign with the word ‘FRICO’ in it.

• Annex 10: Excerpt from the opponent’s website regarding the award of a gold medal in its class and also as overall World Champion at the World Champion Cheese Contest in Wisconsin (USA) of the Frico Old Dutch Master cheese in 2004.

• Annex 11: Press release (partially translated) referring to the award mentioned in Annex 10 won in 2012.

• Annex 12: layout of promotional material dated on 17/02/2011 whereon cheese and a figurative mark containing the word ‘FRICO’ appear.

• Annex 19, pages 94, 95 and 96: three slides from a presentation related to a marketing campaign through different means, namely social media, shops, mail and television.

• Annex 23: undated table of the opponent with the volumes of FRICO cheese sold in different countries (including Member States) from 2011 until 2015 as well as table prepared by the opponent with the marketing expenditure for FRICO cheese in different countries (including Member States) from 2011 until 2015.

• Annex 24: seven invoices, one per year from 2010 to 2016, to a Spanish company, including the word ‘FRICO’ and the names of different types of cheeses.

• Annex 25: one cancellation invoice of 23/10/2015 issued to an Italian client. Seventeen invoices to different Italian clients issued in the period 2011-2014 and one invoice issued on 10/05/2013 to a Dutch client. The invoices include the word ‘FRICO’ and the names of different types of cheeses.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a reputation.

The documents directly relating to the opponent’s company (Annexes 1 and 2) are not related to the use or the recognition of the earlier trade marks. In the next place, the evidence regarding the distribution of the opponent’s goods, annual revenue, marketing expenditures and history of the opponent, namely Annexes 3, 6 and 23 are either undated excerpts from the opponent’s web site or information originating from the opponent and not corroborated by further independent and compelling evidence. The existence of the opponent’s different web sites does not prove per se and without the support of further evidence that the earlier marks are known and to what degree by the relevant public in the European Union. Furthermore, the submitted invoices for Spanish, Italian and Dutch clients (Annexes 24 and 25) are insufficient to support the extent to which the opponent claimed sales in these countries (Annex 23). The excerpt from the Benelux Office for Intellectual Property shows use for the word mark ‘FRICO’ since 1898 in The Netherlands. However, it does not specify for which goods it has been used and if the degree of use has been extensive until the relevant date.

The existence of registered marks in numerous countries (Annex 4) and winning an award in an international competition in the USA (Annexes 10 and 11) do not show that the earlier marks are known in the European Union either, taking into account, in particular, that there is no information on the participation or visits/exposure of the cheese contest referred to by the opponent.

The rest of the documents in this regard (Annexes 12 and Annex 19 pages 94, 95 and 96) are not sufficient on their own or in conjunction with other documents to prove that actual and sufficient investment in promotion was made. The layout of promotional material (Annex 12) does not bear indications whether it has been printed and distributed, when and to what relevant public, just as the slides from a marketing campaign presentation do not prove that that campaign has been carried out (Annex 19 pages 94, 95 and 96).

 

Despite showing some use of the trade mark, the evidence does not provide any indication of the degree of recognition of the trade mark by the relevant public. Furthermore, there is no third-party evidence to indicate the market share of the trade mark or the extent to which the trade mark has been promoted.

As a result, the evidence does not show that the trade mark is known by a significant part of the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade marks have a 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 any of the earlier trade marks has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected as far as it is based on this ground.

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

Tobias KLEE

Denitza STOYANOVA-VALCHANOVA

Martin EBERL

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.