OPPOSITION No B 2 552 282

POMURKA mesna industrija d.d., Murska Sobota – v stečaju, Panonska ulica 11, 9000 Murska Sobota, Slovenia (opponent), represented by Jure Marn, Ljubljanska ulica 9, 2000 Maribor, Slovenia (professional representative)

a g a i n s t

OSEM d.o.o. Murska Sobota, Čopova ulica 28, 9000 Murska Sobota, Slovenia (applicant), represented by Patentna Pisarna D.O.O., Čopova 14, 1001 Ljubljana, Slovenia (professional representative).

On 18/01/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 552 282 is partially upheld, namely for the following    contested goods and services in Classes 29, 30 and 40:

Class 29: Meats; Smoked meats; Smoke-dried meats; Fresh meat; Frozen meat; Meat, preserved; Dried meat; Mincemeat [chopped meat]; Fish; Poultry; Game; Beef; Pork; Meat extracts; Jellies; Meat jellies; Lard for food; Dishes of meat; Prepared meals made from meat (meat predominating); Ready-made meals, Predominantly containing red meat; Ready-made meals, Predominantly containing wild game; Prepared meals made from poultry [poultry predominating]; Dishes of fish; Foodstuffs made from fish; Poultry dishes; Game dishes; Liver; Meat spreads; sliced luncheon meats; Meat-based snack foods; Soy-based snack foods; Salted meats; Bacon; Ham; Sausages; Black pudding; Sausages in batter; Suet for food; Shellfish, not live; Shrimps, not live; Mussels, not live; Fish spreads; vegetable spreads; Vegetarian spreads; Spreads made from nuts; Tofu; Tahini (sesame seed paste); Vegetable salads; Meat salads; Gelatine; Preserved, frozen, dried and cooked fruits and vegetables; Ajvar [preserved peppers]; Onions, preserved; Preserved garlic; Mushrooms, preserved; Beans, preserved; Pulses, preserved; Sauerkraut; Pickled gherkins; Preserved lentils; Olives, preserved; Preserved soya beans; Tomato purée; Edible oils and fats; Edible oils; Edible fats; Cheese spreads; Dairy spreads.

Class 30: Sandwiches; Sandwiches containing meat; Pies containing meat; Pies; Meat pies; Mincemeat pies; Frozen pastry stuffed with meat; Frozen pastry stuffed with vegetables; Pastries consisting of vegetables and meat; Pastries consisting of vegetables and fish; Salt; Mustard; Sauces (condiments); Meat gravies; Tomato sauce; Spices; Condiments; Seasonings; Preparations made from cereals; Bread.

Class 40 (in its entirety): Food processing; Processing of cooked foods; Processing of meat and of meat and poultry products; Fish processing; Preservation of food; Food smoking; Smoking of meat; Smoking of fish.

2.        European Union trade mark application No 13 907 266 is rejected for all the above goods and services. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services (in Classes 29, 30 and 40) of European Union trade mark application No 13 907 266 (word mark:
“KEKEC”). The opposition is based on Slovenian trade mark registration
No 200670206 (word mark: “KEKEC”) and on international registration designating Austria, Italy, Hungary and Croatia No 933 069 (word mark: “KEKEC”). The opponent invoked Article 8(1)(a) and (b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years 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 in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely Slovenian trade mark registration No 200670206 and international registration designating Austria, Italy, Hungary and Croatia No 933 069.

The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the publication of the contested application.

The contested application was published on 08/05/2015. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Slovenia, Austria, Italy, Hungary and Croatia from 08/05/2010 to 07/05/2015 inclusive. Furthermore, the evidence must show use of the trade marks for the goods and services on which the opposition is based, namely the following:

International registration designating Austria, Italy, Hungary and Croatia No 933 069

Class 29: Meat; preserved meat; canned meat; pasteurized meat; pasteurized meat liver; liver patés; fruit slices; salami; meat extracts; meat jellies; deli; prosciutto; cured meats; frozen meat; bacon; pork meat; ham; mortadella; sausage; boudin (sausage); fatty substances for the manufacture of edible fats; bouillons; fat-containing mixtures for bread slices; breaded sausages; preparations for making bouillon; lard; animal marrow for food; tripe; poultry and game; fish; poultry and game; meat extracts; meat, fruit and vegetables preserved, frozen, dried and cooked; meat products and semi-products, fish, poultry and game.

Class 30: Pasta.

Class 35: Wholesale and retail of meat; Wholesale and retail of canned meat; Wholesale and retail of preserved meat; Wholesale and retail of pasteurized meat and/or preserved meat products; Wholesale and retail of pasteurized meat and/or pasteurized meat products; Wholesale and retail of pasta, sliced and/or salami; Wholesale and retail of meat extracts, meat jellies, soups and/or charcuterie; Wholesale and retail of bacon, sausage and/or mixtures containing grease for bead slices; Wholesale and retail of lard and/or animal marrow for food; Wholesale and retail of poultry and game, fish, tripe and/or eggs; Wholesale and retail of oils and/or fats; business management; business administration; office functions.

Class 40: Food processing services; meat processing services; meat products processing services and semi-products; meat conservation services; treatment of materials (not for textile use).

Slovenian trade mark registration No 200670206

Class 29: Meat; preserved meat; canned meat; pasteurized meat; pasteurized meat products; pate; foie gras; cold cuts; salami; meat extracts; met jellies; meats, smoked; ham; meat in brine; frozen meat; bacon; pork; ham; mortadella; sausages; pudding; fatty substances used to produce edible fats; broths; a mixture of fat spreads for bread; breaded sausage; preparations for making broth; lard, cooking; animal marrow for food; tripe, poultry and game; fish; preserved, dried and cooked fruits and vegetables; eggs, edible oils and fats.

Class 35: Wholesale and retail of meat; Wholesale and retail of canned meat; Wholesale and retail of preserved meat; Wholesale and retail of pasteurized meat and/or preserved meat products; Wholesale and retail with patés, cold meats and/or salami; Wholesale and retail of meat extracts, meat jellies, meat soups and/or smoked meats; Wholesale and retail of bacon, sausage and/or mixtures of fast spreads for bread; Wholesale and retail of grease (cooking) and/or animal bone marrow (for food); Wholesale and retail of poultry and game, fish, tripe and/or eggs; Wholesale and retail of edible oils and/or fats; business management; business administration; office functions.

Class 40: Food processing services; meat processing services; meat products processing services and semi-finished products; services canning meat; processing materials (non textile purposes).

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

On 01/03/2016 and 25/03/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 06/05/2016 to submit evidence of use of the earlier trade marks. On 16/03/2016, within the time limit, the opponent submitted evidence of use.

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 to be taken into account is, in particular, the following:

• Licensing agreement and other documents that were exchanged between the opponent and the applicant during December 2010 and January 2011 (second posting).
• Invoice of November 2011 and other related documents, such as various letters, a summary sales report and a sales report (third posting).
• Invoice and summary sales report dating from August 2012 (fourth posting).
• Invoice and summary sales report dating from December 2012 (fifth posting).
• Invoice and summary sales report dating from May 2013 (sixth posting).

The opponent has also submitted a licensing agreement in Slovenian. Since there is no legal basis for this in the EUTMR and because it is not in the language of the proceedings, it will not be taken into account.

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier Slovenian trade mark during the relevant period in the relevant territory. The proof of use, taken as a whole, is sufficient in terms of quantity and quality to demonstrate the extent of use, nature of use, place of use (Slovenia) and time of use of the earlier trade mark.

The applicant contests the evidence of use filed by the opponent on the grounds that it does not originate from the opponent itself but from the applicant. However, it is based on a licensing agreement between the parties. According to Article 15(2) EUTMR, use of the European Union trade mark with the consent of the proprietor shall be deemed to constitute use by the proprietor. Although this provision covers EUTMs, it can be applied by analogy to earlier marks registered in Member States. The fact that the opponent submitted evidence of use of its marks by a third party implicitly shows that it consented to this use (08/07/2004, T 203/02, Vitafruit, EU:T:2004:225). Consequently, since it can be presumed that the evidence filed by the opponent is an implicit indication that use has been made with its consent, the applicant’s claim is unfounded. To this extent, and in accordance with Article 15(2) EUTMR, the Opposition Division considers that the use made by the applicant was made with the opponent’s consent and thus is equivalent to use made by the opponent.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

In the present case, the evidence shows genuine use of the trade mark for the goods in Class 29, namely pate.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

DOUBLE IDENTITY – ARTICLE 8(1)(a) EUTMR

The trade mark shall not be registered if it is identical to the earlier trade mark and the goods or services for which registration is sought are identical to the goods or services for which the earlier trade mark is protected.

1. The goods

The goods in Class 29 on which the opposition is based are the following:

Pate.

The contested (identical) goods in Class 29 are the following:

Pates; Meat pâté; Liver pâté; Goose liver pate; Vegetable pies; Olive paste; Garlic paste; Hummus (chickpea paste).

Pates are identically contained in both lists of goods.

The contested Meat pâté; Liver pâté; Goose liver pate; Vegetable pies; Olive paste; Garlic paste; Hummus (chickpea paste) are included in the broad category of the opponent’s Pate. Therefore, they are identical.

2. The signs

KEKEC	KEKEC
Earlier trade mark	Contested sign

The signs, both word marks, are identical.

3. Conclusion

Since the signs and the goods are identical, the opposition is well founded according to Article 8(1)(a) EUTMR as regards the aforementioned goods.

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.

4. The goods and services

The goods in Class 29 on which the opposition is based are the following:

Pate.

The remaining contested goods and services in Classes 29, 30 and 40 are the following:

Class 29: Meats; Smoked meats; Smoke-dried meats; Fresh meat; Frozen meat; Meat, preserved; Dried meat; Mincemeat [chopped meat]; Fish; Poultry; Game; Beef; Pork; Meat extracts; Jellies; Meat jellies; Lard for food; Dishes of meat; Prepared meals made from meat (meat predominating); Ready-made meals, Predominantly containing red meat; Ready-made meals, Predominantly containing wild game; Prepared meals made from poultry [poultry predominating]; Dishes of fish; Foodstuffs made from fish; Poultry dishes; Game dishes; Liver; Meat spreads; sliced luncheon meats; Meat-based snack foods; Soy-based snack foods; Salted meats; Bacon; Ham; Sausages; Black pudding; Sausages in batter; Soups; Broth; Preparations for making soup; Broth concentrates; Suet for food; Shellfish, not live; Shrimps, not live; Mussels, not live; Fish spreads; vegetable spreads; Vegetarian spreads; Spreads made from nuts; Tofu; Tahini (sesame seed paste); Vegetable salads; Meat salads; Gelatine; Preserved, frozen, dried and cooked fruits and vegetables; Ajvar [preserved peppers]; Onions, preserved; Preserved garlic; Mushrooms, preserved; Beans, preserved; Pulses, preserved; Sauerkraut; Pickled gherkins; Preserved lentils; Olives, preserved; Preserved soya beans; Tomato purée; Nuts, prepared; Fruit chips; Marmalade; Compotes; Eggs; Milk and milk products; Cheese spreads; Dairy spreads; Edible oils and fats; Edible oils; Edible fats; Fatty substances for the manufacture of edible fats; Fat-containing mixtures for bread slices.

Class 30: Sandwiches; Sandwiches containing meat; Pies containing meat; Pies; Meat pies; Mincemeat pies; Frozen pastry stuffed with meat; Frozen pastry stuffed with vegetables; Pastries consisting of vegetables and meat; Pastries consisting of vegetables and fish; Salt; Mustard; Vinegar; Sauces (condiments); Meat gravies; Tomato sauce; Spices; Seasoning coatings for meat, fish, poultry and game; Condiments; Seasonings; Meat tenderizers, for household purposes; Flour; Preparations made from cereals; Bread; Tarts; Sweets.

Class 40: Food processing; Processing of cooked foods; Processing of meat and of meat and poultry products; Fish processing; Preservation of food; Food smoking; Smoking of meat; Smoking of fish.

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 Meats; Smoked meats; Smoke-dried meats; Fresh meat; Frozen meat; Meat, preserved; Dried meat; Mincemeat [chopped meat]; Fish; Poultry; Game; Beef; Pork; Meat extracts; Jellies; Meat jellies; Lard for food; Dishes of meat; Prepared meals made from meat (meat predominating); Ready-made meals, Predominantly containing red meat; Ready-made meals, Predominantly containing wild game; Prepared meals made from poultry [poultry predominating]; Dishes of fish; Foodstuffs made from fish; Poultry dishes; Game dishes; Liver; Meat spreads; sliced luncheon meats; Meat-based snack foods; Soy-based snack foods; Salted meats; Bacon; Ham; Sausages; Black pudding; Sausages in batter; Suet for food; Shellfish, not live; Shrimps, not live; Mussels, not live; Fish spreads; vegetable spreads; Vegetarian spreads; Spreads made from nuts; Tofu; Tahini (sesame seed paste); Vegetable salads; Meat salads; Gelatine; Preserved, frozen, dried and cooked fruits and vegetables; Ajvar [preserved peppers]; Onions, preserved; Preserved garlic; Mushrooms, preserved; Beans, preserved; Pulses, preserved; Sauerkraut; Pickled gherkins; Preserved lentils; Olives, preserved; Preserved soya beans; Tomato purée; Edible oils and fats; Edible oils; Edible fats; Cheese spreads; Dairy spreads have the same purpose, distribution channels, relevant public and producers as the opponent’s goods. Therefore, they are similar (to a high degree).

The remaining Soups; Broth; Broth concentrates; Preparations for making soup; Nuts, prepared; Fruit chips; Marmalade; Compotes; Eggs; Milk and milk products; Fatty substances for the manufacture of edible fats; Fat-containing mixtures for bread slices have different natures from the opponent’s goods. Furthermore, they are neither complementary to nor in competition with each other. Their distribution channels and methods of use are also different. Consumers would not think that these goods came from the same undertaking or economically linked undertakings. The fact, that these products also belong to food, are not sufficient, to come to a similarity between the goods in question. Therefore, they are dissimilar.

Contested goods in Class 30

The contested Sandwiches; Sandwiches containing meat; Pies containing meat; Pies; Meat pies; Mincemeat pies; Frozen pastry stuffed with meat; Frozen pastry stuffed with vegetables; Pastries consisting of vegetables and meat; Pastries consisting of vegetables and fish; Salt; Mustard; Sauces (condiments); Meat gravies; Tomato sauce; Spices; Condiments; Seasonings; Preparations made from cereals; Bread have the same purpose, distribution channels, relevant public and producers as the opponent´s goods. Therefore, they are similar (to a high degree).

The remaining Vinegar; Seasoning coatings for meat, fish, poultry and game; Meat tenderizers, for household purposes; Tarts; Sweets; Flour have different natures from the opponent’s goods. Furthermore, they are neither complementary to nor in competition with each other. Their distribution channels and methods of use are also different. Consumers would not think that these goods came from the same undertaking or economically linked undertakings. The fact that these products are all foodstuffs is not sufficient to conclude that there is similarity between the goods in question. Therefore, they are dissimilar.

Contested services

Goods and services may be similar if consumers would be likely to think that they came from the same undertaking or economically linked undertakings. The contested food processing; processing of cooked foods; processing of meat and of meat and poultry products; fish processing; preservation of food; food smoking; smoking of meat; smoking of fish have the same distribution channels, producers/suppliers and consumers as the opponent’s goods. Therefore, they are similar to a low degree.

5. The signs

KEKEC	KEKEC
Earlier trade mark	Contested sign

The signs, both word marks, are identical.

6. 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; and 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; and 30/06/2004, T-186/02, Dieselit, EU:C:2011:238, § 38).

The contested goods and services are partly similar to different degrees and partly dissimilar.

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 some of the goods are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

Taking into account the identity between the signs and the different degrees of similarity between the goods and services, there is a likelihood of confusion. Because of the identity between the signs, there is also a likelihood of confusion for the services that are similar only to a low degree.

Therefore, the opposition is partly well founded under Article 8(1)(b) EUTMR.

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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 shall 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

Konstantinos MITROU

Peter QUAY

Volker MENSING

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.