OPPOSITION No B 2 723 412

Ludwig Schokolade GmbH & Co. KG, Senefelderstr. 44, 51469 Bergisch Gladbach, Germany (opponent), represented by Splanemann Patentanwälte Partnerschaft, Rumfordstr. 7, 80469 München, Germany (professional representative)

a g a i n s t

Zendegii Frill Limited, Unit 10, 10 Acklam Road, London W10 5QZ, United Kingdom, (applicant), represented by Filemot Technology Law Ltd, 25 Southampton Buildings, London WC2A 1AL, United Kingdom (professional representative).

On 21/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 723 412 is upheld for all the contested goods, namely:

Class 30:        Confectionery ices; confectionery in frozen form; fruit ice; ice cream substitute.

2.        European Union trade mark application No 15 225 329 is rejected for all the contested goods. It may proceed for the remaining goods.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 225 329 for the figurative mark , namely against all the goods in Class 30. The opposition is based on European Union trade mark registration No 8 899 312 for the word mark ‘FRITT’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority 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 the trade mark on which the opposition is based, European Union trade mark No 8 899 312.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The date of filing of the contested application is 16/03/2016. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 16/03/2011 to 15/03/2016 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:        Sweet spreads, namely nut-nougat creams and chocolate creams; nut pastes; pralines, including with liquid fillings, in particular of wine and spirits; muesli and chocolate bars, in particular filled bars, including with caramel and/or nuts and/or chopped nuts; pastry (sweet and savoury) and confectionery; long-life pastries, including longlife pastries covered with fat-based icing, chocolate and chopped nuts or almonds; sugar confectionery, in particular chewing candy, including fruit-flavoured chewing candy; shaped chocolate goods and confectionery, in particular figures and assortments of figures; sugar; dragees (sugar confectionery) and chewing gum for nonmedical purposes; filled chocolate; hollow chocolate bodies containing playthings and/or small toys; rice, groats for food; flour and preparations made from cereals, pasta; bread; honey; baking powder; tinned puddings; all the aforesaid goods included in Class 30 also for dietetic non-medical use and, if possible, also in instant form.

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 16/09/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 16/11/2016 to submit evidence of use of the earlier trade mark. After an extension of the time limit of two months, on 05/01/2017, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Annex 1: an affidavit by Bernd Eichler, authorised representative and head of marketing of Ludwig Schokolade & Co. KG (the opponent), stating that the trade mark ‘FRITT’ has been used by the opponent for sugar confectionary for at least 40 years in Germany and many other European countries such as Belgium, Ireland, the Netherlands,  Austria, Finland, and the United Kingdom, and. The affidavit shows sales figures in these countries for 2011 to 2015, indicating a substantial number of items sold in each country.

• Annex 2: the trade mark ‘FRITT’ in the form  used on packaging dating from 2013 and 2014 for chewing candy.

• Annex 3: the trade mark ‘FRITT’ in the form  used in advertising and on packaging dating from 2011 for confectionery such as chewing candy.

• Annex 4: the trade mark ‘FRITT’ in the form  used in advertising and on packaging dating from 2012 for confectionary such as chewing candy.

• Annex 5: the trade mark ‘FRITT’ in the form  used in advertising and on packaging dating from 2013 for confectionary such chewing candy.

• Annex 6: the trade mark ‘FRITT’ in the form  used in advertising and on packaging dating from 2014 for confectionary such as chewing candy.

• Annex 7: the trade mark ‘FRITT’ in the form  used in advertising and on packaging dating from 2015 for confectionary such as chewing candy.
• Annex 8: 34 invoices dated between 2011 and 2015 showing sales of confectionery, such as chewing candy, under the trade mark ‘FRITT’ in the following European Union countries:

• Germany: 12 invoices dated 16/03/2011 to 16/02/2015;
• Czech Republic: six invoices dated 27/04/2011 to 16/12/2015;
• Belgium: four invoices dated 24/06/2011 to 17/12/2013 and 02/04/2015;
• Austria: two invoices dated 20/12/2012 and 03/04/2014;
• Netherlands: two invoices dated 06/02/2014 and 13/10/2015;
• Slovakia: three invoices dated 10/05/2011, 21/05/2012 and 14/07/2014;
• Lithuania: three invoices dated 03/06/2011, 03/07/2012 and 24/01/2014;
• France: one invoice dated 20/05/2011;
• Spain: one invoice dated 26/11/2015;
• Romania: one invoice dated 04/02/2013;
• Portugal: one invoice dated 20/06/2013;
• Latvia: one invoice dated 13/09/2013;
• Malta: one invoice dated 08/03/2012;
• Poland: one invoice dated 06/10/2015.

The invoices and the promotional material show that the place of use is the European Union and, in particular, Germany. This can be inferred from the language of the documents, namely German, and some addresses, mainly in Germany, but also in the Czech Republic, Belgium, Austria, the Netherlands, Slovakia, France, Spain, Romania, Portugal, Latvia, Malta and Poland. Therefore, the evidence relates to the relevant territory. This is also supported by the affidavit submitted. The opponent offered products in the field of chewing candy during the relevant period in sufficient quantity to different undertakings in various territories.

All of the evidence is dated within the relevant period.

The documents filed, namely the affidavit and the invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

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.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, contrary to the applicant’s opinion, the use of the mark in the forms  and  does not alter the distinctive character of the registered word mark ‘FRITT’, since a word mark is protected for the word as such, regardless of its written form. Furthermore, the added figurative elements are commonplace and/or non-distinctive, for example the white label element on a green background or the additional word element ‘mit Vitamin C’, which refers to ingredients.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

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 will, 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:        Chewing candy, including fruit-flavoured chewing candy.

Therefore, the Opposition Division will only consider the abovementioned 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.

1. The goods

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

Class 30:        Chewing candy, including fruit-flavoured chewing candy.

The contested goods are the following:

Class 30:        Confectionery ices; confectionery in frozen form; fruit ice; Ice cream substitute.

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 confectionery ices; confectionery in frozen form; fruit ice; ice cream substitute are all edible confectionery for human consumption. They therefore have the same purpose as the opponent’s chewing candy, including fruit-flavoured chewing candy. They target the same relevant public and are in competition with each other. Therefore, the goods are similar.

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 similar are directed at the public at large. Contrary to the applicant’s opinion, the degree of attention will be below average because the goods are cheap and will be consumed on a daily basis.

3. The signs

FRITT
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 verbal elements of the earlier mark, ‘FRITT’, and of the contested sign, ‘FRILL’, are not meaningful in certain territories, for example, in those countries where German is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the public, such as the public in Germany or Austria.

The earlier mark is a word mark, ‘FRITT’. In case of word marks, the word as such is protected, not its written form. According to case-law, the protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters.

The contested sign is a figurative mark, consisting of the letters ‘FRILL’ in standard lower case letters above a figurative element depicting the head and torso of a bear.

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).

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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 first three letters of their verbal elements, ‘FRI’. However, they differ in their last two letters, the double consonants ‘TT’ and ‘LL’, and in the graphic depiction of the contested sign.

Although the signs’ verbal elements differ in their final double consonants, the earlier mark is a word mark and and, as discussed above, is protected in both upper and lower case letters. The lower case letters ‘tt’ are visually not very different from the lower case letters ‘ll’. Therefore, despite the graphic depiction of the contested sign, the signs are visually similar to a high degree.

Aurally, the figurative element will not be pronounced. The pronunciation of the signs coincides in the sound of the letters ‛FRI*’, present identically in both signs. However, the pronunciation of the marks differs in the sound of the letters ‛TT’ at the end of the earlier mark and the letters ‘LL’ at the end of the contested sign. The signs will be pronounced with the same number of letter sounds, namely four. They differ only in their final double consonants, which will be pronounced as the sound of one letter, ‘TT’ and ‘LL’ respectively. Therefore, they have a very similar rhythm, pronunciation and sound. The signs are aurally similar to a high degree.

Conceptually, although the public in the relevant territory will perceive the figurative element of the contested sign as explained above, namely the figure of a bear, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, 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

A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular a similarity between the marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or 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; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

For the purpose of the global appreciation, the average consumer of the category of goods or services concerned is deemed to be reasonably well informed and reasonably observant and circumspect. The consumer’s degree of attention is likely to vary according to the category of goods or services in question, and 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; 30/06/2004, T-186/02, Dieselit, EU:C:2011:238, § 38).

The contested goods are similar. The signs are visually and aurally similar to a high degree.

Contrary to the opinion of the applicant, the differences between the signs are not sufficient to distinguish them clearly from each other, because the verbal element is more important, as stated above, and the marks coincide in their first three letters. Furthermore, the last two letters of the marks, ‘LL’ and ‘TT’, are visually similar.

Taking into account the degree of similarity between the signs, the normal degree of distinctiveness of the earlier trade mark, the fact that the degree of attention of the relevant public is low and the fact that the goods are similar, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and, therefore, the opposition is upheld.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the German-speaking part of the public and therefore the opposition is 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 8 899 312. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is 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 as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

COSTS

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

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

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

The Opposition Division

Konstantinos MITROU

Magnus ABRAMSSON

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.

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