Good Fellas | Decision 2680117 – GREEN ISLE FOODS LIMITED v. Michael Wendt

014000000 - 014999999, 014908172, 2017, 27, Date, Decision Type, G-company, G-trademark, Good Fellas, GREEN ISLE FOODS LIMITED, Involved Parties, June-2017, OPPOSITION, Trademark, Trademark number, W-company, Wendt, Michael

OPPOSITION No B 2 680 117

Green Isle Foods Limited, Naas Industrial Estate, Naas Co. Kildare, Ireland (opponent), represented by Walker Morris LLP, Kings Court 12 King Street, Leeds, West Yorkshire LS1 2HL, United Kingdom (professional representative)

a g a i n s t

Michael Wendt, Wagrienring 10, 23730 Sierksdorf, Germany (applicant), represented by Stefan Pressel, Schönböckenerstraße 28 D, 23556 Lübeck, Germany (professional representative).

On 27/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 680 117 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 908 172 for the word mark ‘Good Fellas’. The opposition is based on European Union trade mark registration No 295 428, United Kingdom registrations No 1 545 917 and No 1 545 918, and Irish trade mark registrations No 157 652 and No 157 653, all for the word mark ‘GOODFELLA’S’. The opponent invoked Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

  • The signs must be either identical or similar.

  • The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

  • Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

  1. Reputation of the earlier trade marks

According to the opponent, the earlier European Union trade mark registration No 295 428 has a reputation in the United Kingdom and Ireland, the United Kingdom registrations No 1 545 917 and No 1 545 918 in the United Kingdom, and the Irish trade mark registrations No 157 652 and No 157 653 in Ireland.

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 11/12/2015. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the United Kingdom and Ireland 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 295 428

Class 29:        Meat, fish, poultry and game; meat products, fish products, poultry products and game products; potato and potato products; prepared meals; meal extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, edible oils, soups all included in class 29.

Class 30:        Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, rolls, pastry , pastry products, pasta and pasta products, snack products, preapared meals; pizza and pizza products, pancakes, fillings, sauces; confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, spices; ice cream; all included in class 30.

Class 42:        Restaurant services; preparation of food and drink; pizzeria services; all included in class 42.

United Kingdom registration No 1 545 917

Class 29:        Meat, fish, poultry and game; meat products, fish products, poultry products and game products; potato and potato products; prepared meals; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, edible oils, soups; all included in Class 29.

United Kingdom registration trade mark registration No 1 545 918

Class 30:        Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, rolls, pastry, pastry products, pasta and pasta products, snack products; prepared meals; pizza and pizza products, pancakes, fillings, sauces; confectionery, ices; honey, treacle, yeast, baking-powder; salt, mustard; vinegar, spices; ice cream; all included in Class 30.

Irish trade mark registration No 157 652

Class 29:        Meat, fish, poultry and game; meat products, fish products, poultry products and game products; potato and potato products; prepared meals; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, edible oils, soups; all included in Class 29.

Irish trade mark registration No 157 653

Class 30:        Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, rolls, pastry, pastry products, pasta and pasta products, snack products; prepared meals; pizza and pizza products, pancakes, fillings, sauces; confectionery, ices; honey, treacle, yeast, baking-powder; salt, mustard; vinegar, spices; ice cream; all included in Class 30.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 29/09/2016 the opponent submitted evidence to support this claim. The evidence consists of the following documents:

  • document from the opponent’s company, dated 2015, about the history of the company;

  • article, dated 2014, about a media campaign for the re-launch of different kinds of pizzas;

  • pictures of advertisements for GOODFELLA’S pizzas;

  • undated extract of the Board Bia Consumer Insight & Innovation Workbook in relation to GOODFELLA’S pizzas.

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

Despite showing some use of the trade mark, the evidence provides no information on the extent of such use. The evidence does not provide any indication of the degree of recognition of the trade marks by the relevant public. Furthermore, although the opponent gave some information about the investments the company makes in marketing and the market share of its products in relation to products of the same category, the evidence does not support this information.

Without any direct evidence of the level of recognition of the marks, the indirect indications such as sales volumes and advertising would have to be very convincing. In the present case, the high sales and advertising figures are only provided by a document with a limited probative value supported by evidence of some, not very extensive, advertising activity. Such evidence is not sufficient to prove that a substantial part of the relevant public recognises the marks.

To sum up, despite showing use of the earlier trade marks, the evidence does not provide any information on the degree of recognition of those trade marks by the relevant public. Moreover, the documents that relate to the extent of use are of limited probative value or do not demonstrate such an extent of use that would allow the conclusion to be drawn that a significant part of the public is familiar with the earlier trade marks. Consequently, the evidence does not demonstrate that the earlier marks had acquired a reputation at the time of filing of the contested EUTM.

As a result, the evidence does not show the degree of recognition of the trade marks by 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 the earlier trade marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

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

The Opposition Division

Birgit FILTENBORG

Cristina CRESPO MOLTO

Irina SOTIROVA

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.

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