OPPOSITION No B 2 013 889

Lidl Stiftung & Co. KG, Stiftsbergstraße 1, 74172 Neckarsulm, Germany (opponent), represented by Harmsen Utescher, Neuer Wall 80, 20354 Hamburg, Germany (professional representative)

a g a i n s t

Dória Administração de Bens Ltda, Av. Brigadeiro Faria Lima, 2277/11° Andar Jardim Europa, São Paulo 01452-000, Brazil (applicant), represented by T Mark Conseils, 31 rue Tronchet, 75008 Paris, France (professional representative).

On 14/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 013 889 is upheld for all the contested goods and services.

2.        European Union trade mark application No 9 851 131 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 9 851 131. The opposition is based on European Union trade mark registration No 6 460 562, in relation to which the opponent invoked Article 8(1)(b) and 8(5) EUTMR, and on the non-registered trade marks ‘LIDL’ and ‘LIDL Stiftung & Co. KG’ and the trade names and the company names ‘LIDL’ and ‘LIDL Stiftung & Co. KG’ used in the course of trade in Germany, in relation to which the opponent invoked Article 8(4) EUTMR.

PROOF OF USE

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

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

The applicant requested that the opponent submit proof of use of earlier European Union trade mark registration No 6 460 562 on which the opposition is based.

In the present case the contested trade mark was published on 08/02/2012.

Earlier trade mark No 6 460 562 was registered on 15/10/2008. Therefore, the request for proof of use is inadmissible, as communicated to the parties on 04/04/2017.

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 and services

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

Class 1: Artificial sweeteners; manures.

Class 2: Paints, lacquers; preservatives against rust and against deterioration of wood; colorants.

Class 3: Bleaching preparations and other substances for laundry use; laundry starch; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, sunscreen preparations, hair lotions; dentifrices; fragrant air freshening sprays.

Class 4: Fuels and illuminants; candles, wicks.

Class 5: Preparations for health care; non-prescription medicines; plasters, materials for dressings; disinfectants; deodorising preparations and deodorising room sprays; dietetic substances for medical use, dietetic foodstuffs (included in class 5), food for babies; hygienic articles, in particular hygienic articles for women, including sanitary towels, panty liners, tampons, sanitary pants; dietetic substances and foodstuffs, not for medical purposes.

Class 6: Metal building materials, ironmongery, small items of metal hardware; goods of common metal (included in class 6).

Class 7: Machines, included in class 7, in particular electric kitchen machines for chopping, milling, pressing or opening, labellers (machines), mincers, sewing machines, trueing machines, drilling machines, saws, welding machines, packing machines, dishwashers, washing machines; agricultural implements and landscape gardening implements, included in class 7.

Class 8: Hand tools and implements (hand operated), included in class 8; cutlery; razors (including electric razors); manicure and pedicure goods.

Class 9: Electric apparatus and instruments included in class 9, namely apparatus and instruments for conducting, switching, transforming, accumulating, regulating and controlling electricity, hair dryers, curling pins and hair curlers, household and kitchen machines and equipment, included in class 9, blenders, juice extractors, toasters, electric can openers, foil sealing devices, electric irons, electric floor cleaning apparatus, in particular vacuum cleaners, floor polishers, electric household and bathroom scales, electric cables, electric plugs, power supplies, amplifiers, splitters; scientific, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; spectacles, binoculars; apparatus for recording, transmission or reproduction of sound or images; telephones, in particular mobile phones; magnetic data carriers, CDs, DVDs, music cassettes, recording discs, data carriers of all kinds containing information and/or sound and/or images; computer software; calculating machines, data-processing equipment and computers.

Class 10: Surgical, medical, dental and veterinary instruments and apparatus; orthopedic articles.

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying and ventilating.

Class 12: Land and water vehicles, in particular bicycles, boats; other apparatus for locomotion by land or water; in particular carts and trolleys; accessories for land and water vehicles, and other apparatus for locomotion by land or water (included in class 12), in particular bicycle accessories, motor vehicle accessories, boat accessories.

Class 13: Fireworks.

Class 14: Jewellery, precious stones; horological and chronometric instruments.

Class 15: Musical instruments.

Class 16: Paper, cardboard and goods made from these materials, included in class 16, in particular hand towels of paper, napkins, table napkins of paper, filter paper, handkerchiefs, toilet paper, packaging containers of paper, bags for packaging; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office machines (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging, included in class 16, in particular sleeves, bags, foils; advertising material, namely patterns for advertisements.

Class 18: Leather and imitations of leather, and goods made of these materials included in class 18, in particular bags and small leather goods, purses, pocket wallets, key wallets; trunks and travelling bags; umbrellas, sun umbrellas, parasols.

Class 20: Furniture, camping furniture, furniture for animals, mattresses, bedding (except bed linen), coatstands, mirrors, picture frames; wickerwork; goods (included in class 20), of wood, cork, reed, cane, wicker, horn, bone, and substitutes for these materials, or of plastics.

Class 21: Household or kitchen utensils and containers (not of precious metal or coated therewith); combs and sponges; brushes (except paint brushes); articles for cleaning purposes; steel wool; glassware, porcelain and earthenware (included in class 21).

Class 23: Yarns and threads, for textile use.

Class 24: Textile goods included in class 24, in particular bed and table linen; bed and table covers.

Class 25: Clothing, footwear, headgear.

Class 26: Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.

Class 27: Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile).

Class 28: Games and playthings; gymnastic and sporting articles, included in class 28; decorations for Christmas trees; game cards.

Class 29: Meat, fish, poultry and game, including the aforesaid goods frozen; meat products and charcuterie; meat extracts; shellfish; preserved, dried and cooked fruits and vegetables, including the aforesaid goods in sweet and/or sour (pickled) sauces; jellies, jams, marmalades, fruit sauces and other sweet spreads; eggs, milk and milk products included in class 29, in particular butter, cheese, fresh milk, long-life milk, cream, yoghurt; curds; powdered milk for food, desserts of yoghurt, quark and cream; meat, sausage, fish, fruit and vegetable preserves; processed nuts; edible oils and fats; prepared meals and frozen foodstuffs included in class 29.

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, in particular cereals, muesli and whole-wheat products; pasta; coffee, tea, cocoa or chocolate-based drinks; coffee and cocoa preparations for making alcoholic and non-alcoholic beverages, flavourings for foodstuffs; bread, pastry and confectionery, confectionery, ices; pudding; honey, treacle; yeast, baking powder, starch for food; salt, mustard; mayonnaise, ketchup; vinegar, sauces (condiments), salad dressings; spices, spice extracts, dried herbs; prepared meals and frozen foodstuffs included in class 30.

Class 31: Fresh fruits and vegetables; nuts; seeds, natural plants and flowers; dried plants; animal feed and additives for animal feed; bedding for animals.

Class 32: Beers; non-alcoholic beer, diet beer; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

Class 33: Alcoholic beverages (except beers) included in class 33, in particular wine, spirits and liqueurs, and alcoholic mixed milk beverages, cocktails and apéritifs with a spirit or wine base; beverages containing wine; alcoholic preparations for making beverages.

Class 34: Tobacco, tobacco goods, in particular cigarettes, smokers’ articles; matches, lighters, included in class 34.

Class 35: Retailing of foodstuffs and luxury goods, hygienic articles, washing and cleaning preparations, cosmetics, medicines, household or kitchen articles and utensils, crockery and cutlery, office requisites, craft supplies, decorative articles, stationery requisites and school supplies, clothing, footwear, textile goods, in particular household textiles, haberdashery, leatherware, travel articles, electronic consumer equipment and apparatus, namely apparatus for recording, transmission or reproduction of sound, images and/or other data, computers, telecommunications apparatus, sporting articles and toys, construction, DIY and gardening requisites, machines, in particular household machines and utensils, foodstuffs for animals and pet accessories; arranging of contracts, for others, for the providing of services, in particular arranging mobile radio contracts and contracts for supplying ring tones for mobile telephones, for others, and arranging of contracts for the providing of repair and maintenance services, for others; consumer consultancy services.

Class 36: Financial consultancy; Arranging of savings and financing agreements.

Class 39: Travel reservation and booking.

Class 40: Photographic laboratory services, included in class 40.

Class 41: Seat reservations and sale of tickets for events.

Class 42: Consultation in environment protection.

The contested goods and services are the following:

Class 16: Publications, magazines and periodicals in general.

Class 35: Arranging and conducting fairs, exhibitions and events for business, advertising and publicity purposes.

Class 41: Arranging and conducting fairs, exhibitions, conventions, seminars, events and conferences for educational purposes; arranging and conducting conventions, seminars and conferences for business, advertising and publicity purposes.

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.

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

The term ‘in particular’, used in the opponent’s list of goods and services, indicates that the specific goods and services 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).

The term ‘namely’, used in the opponent’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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 16

The contested publications, magazines and periodicals in general are included in the broad category of the opponent’s printed matter. Therefore, they are identical.

Contested services in Class 35

The contested arranging and conducting fairs, exhibitions and events for business, advertising and publicity purposes are services aimed at promoting the launch and/or sale of a company’s product or service. Such services are normally provided by consultants specialising in the provision of such services to undertakings.

These services are not similar to the opponent’s goods and services.

In particular, they are not similar to the opponent’s services in Class 35, which include retail services, arranging of contracts, for others, for the providing of services, and consumer consultancy services. The objective of the opponent’s retail services is to bring together, and offer for sale, a wide variety of different goods, thus allowing consumers to conveniently satisfy different shopping needs at one stop, and these services target the general consumer. The opponent’s arranging of contracts, for others, for the providing of services are services rendered by professionals to help companies with the performance of their business operations, including internal day-to-day operations and support services. The opponent’s consumer consultancy services involve giving commercial information and advice to consumers, including, for instance, information in relation to quality, purchase locations and other factors upon which a consumer would make a purchasing decision.

The opponent’s abovementioned services and the contested arranging and conducting fairs, exhibitions and events for business, advertising and publicity purposes have different natures and purposes and are provided by different companies. Furthermore, they are neither in competition nor complementary.

Moreover, contrary to the opponent’s opinion, the Opposition Division considers that the contested arranging and conducting fairs, exhibitions and events for business, advertising and publicity purposes are not similar to the opponent’s advertising material, namely patterns for advertisements; printed matter; instructional and teaching material in Class 16. Even though the latter can be used as a medium for disseminating advertising, this is insufficient for finding similarity. Likewise, the fact that some goods or services may appear in advertisements displayed in fairs and exhibitions is obviously insufficient for finding similarity.

The contested arranging and conducting fairs, exhibitions and events for business, advertising and publicity purposes are not similar to the opponent’s remaining goods and services in Classes 1-16, 18, 20, 21, 23-36 and 39-42, since they obviously differ in their natures, purposes, methods of use and manufacturers/providers, and they are neither in competition nor complementary.

Contested services in Class 41

The contested arranging and conducting fairs, exhibitions, conventions, seminars, events and conferences for educational purposes are similar to a low degree to the opponent’s sale of tickets for events in Class 41, to the extent that the latter includes events for educational purposes. Therefore, these services are rendered by the same companies to the same clients, since it is common for companies organising an educational event to provide the sale of tickets for that particular event.

The contested arranging and conducting conventions, seminars and conferences for business, advertising and publicity purposes, in Class 41, relate to the organisation of events (e.g. cultural, educational or entertainment events) for business, advertising and publicity purposes. They are similar to a low degree to the opponent’s sale of tickets for events. These services are likely to be rendered by the same companies to the same clients, since it is common for companies organising events to also provide the sale of tickets for those events.

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 a low degree are directed at the public at large and at professionals, whose degree of attention is average.

3. The signs

LIDL	LIDE
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.

In the present case, due to a stronger aural similarity between the signs in some territories, such as the German-speaking territories, than in others, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the public.

The verbal element ‘LIDL’, constituting the earlier mark, and the word ‘LIDE’ of the contested sign have no meaning for the relevant public and are, therefore, distinctive to an average degree.

Visually, the signs coincide in their first three letters, ‘LID’, placed at the beginning of the signs. This is particularly relevant, since 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. The signs only differ in their final letters, ‘L’ versus ‘E’. Since the signs coincide in three letters out of four, placed in the same order at the beginning of the signs, the signs are considered visually similar to a high degree.

Aurally, since the letters ‘D’ and ‘L’ of the earlier mark are nearly impossible to pronounce without uttering a vowel between them, the earlier sign is pronounced as /li-del/. The contested sign is pronounced in two syllables, /li-de/. The pronunciation of the signs coincides in the sound of the letters ‛LID’, present identically in both signs, and they also have the sound /e/ in common. They have the same rhythm (two syllables) and intonation. They differ in the sound of the final letter ‘L’ of the earlier mark. Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

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 and services 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).

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

The goods and services are partly identical, partly similar to a low degree and partly dissimilar. The inherent distinctiveness of the earlier mark is normal.

The signs are visually and aurally similar to a high degree and they have no concepts that would help to differentiate them. The dissimilarities between the signs are insufficient to counterbalance the abovementioned similarities.

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 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.

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198). While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Moreover, the signs in the present case and those in these previous decisions are not comparable.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to a low degree to those of the earlier trade mark, given the relevant similarities between the signs and the interdependence principle mentioned above.

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 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.

For the remaining contested services in Class 35, which are dissimilar to the opponent’s goods and services, the examination of the opposition continues on the basis of 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. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

2. Reputation of the earlier trade mark

In the notice of opposition, the opponent claimed that the earlier trade mark has a reputation in the European Union for all the goods and services for which it is registered. However, in its observations submitted on 12/01/2017 (within the time limit to substantiate the opposition), the opponent put forward that the earlier mark is reputed in the European Union, and particularly in Germany, for retailing of foodstuffs and non-foodstuffs in Class 35 specifically.

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 29/03/2011. 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 services for which the opponent has claimed reputation, in particular retailing of foodstuffs and non-foodstuffs in Class 35.

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 12/01/2017, the opponent submitted the following evidence:

• Extracts from the opponent’s websites in France, Italy, Spain and the United Kingdom.
• An extract from Wikipedia explaining that ‘LIDL’, founded in 1930, is a global discount supermarket chain based in Germany that operates over 10 000 stores across Europe, with 315 000 employees. Its revenue was EUR 63.35 billion in 2013.

The opponent puts forward that ‘LIDL’ is a chain of discount supermarkets offering high-quality goods and services at prices lower than those of traditional supermarkets and other competitors. The goods and services are sold under LIDL’s own brands and under third parties’ brands and they are offered through stores in several countries and online. All stores are run under the trade mark ‘LIDL’.

• Photographs of stores with the illuminated advertising sign  and photographs of shopping bags and trolleys bearing the same sign.
• Copies of advertising leaflets dated 2008-2016, distributed in Germany.
• Extracts from the opponent’s websites in Germany, Poland, France and Belgium.
• A chart detailing turnover figures, the information having been compiled by the independent professional German magazine Lebensmittel Zeitung. The chart was published in an article dated 10/06/2003 and detailed information is provided on the history and presence of the LIDL network in several Member States.
• A press article from the online edition of Spiegel dated 21/01/2005, detailing advertising expenditure levels and the rapid growth of LIDL. It states that, in 2005, LIDL expenses for advertisements amounted to EUR 334 million, representing an increase of 24% compared with the previous year.
• A ranking published in Lebensmittel Zeitung No 04/2013 entitled ‘The 20 biggest advertising retailers in 2012/2011’ showing that the opponent was ranked second in 2011 with an advertising expenditure of EUR 228.5 million.
• A ranking published in Lebensmittel Zeitung No 05/2016 entitled ‘The 30 biggest advertising retailers in 2015/2014’ showing that the opponent was ranked second in both 2014 and 2015 with advertising expenditures of EUR 223.6 million and EUR 276 million, respectively.
• A chart published in Lebensmittel Zeitung dated 11/03/2014 entitled ‘TOP 30 food retail Germany 2014’, a chart published in Lebensmittel Zeitung dated 16/03/2012 entitled ‘TOP 30 food retail Germany 2012’ and a chart published in Lebensmittel Zeitung dated 13/03/2015 entitled ‘TOP 30 food retail Germany 2015’. These charts show the opponent’s rankings, total turnovers and growth compared with previous years and give the proportions per foodstuff as a percentage. The figures are very high. For instance, in 2011, the opponent was ranked fourth, the total turnover was EUR 15 800 million, which was a 1.9% increase compared with 2010, and 82% of this turnover concerned foodstuffs (EUR 12 956 million).

The abovementioned evidence indicates that the earlier trade mark has been subject to long-standing and intensive use. The sales figures and marketing efforts suggest that the trade mark has a consolidated position in the market for retailing of foodstuffs. The evidence submitted allows the conclusion to be drawn that not only the figurative mark but also the word mark ‘LIDL’ enjoys reputation among the relevant public, particularly in Germany, where it is one of the biggest discount retail chains, with regard to the number of stores and turnover figures, and one of the top ranking brands, as demonstrated by the press releases, with significant advertising expenditures. Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence leads to the conclusion that the earlier trade mark enjoys reputation for retailing of foodstuffs in Class 35.

3. The ‘link’ between the signs

As seen above, the earlier mark enjoys reputation and the signs are similar. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

∙        the degree of similarity between the signs;

∙        the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

∙        the strength of the earlier mark’s reputation;

∙        the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

∙        the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

Firstly, as regards the degree of similarity between the marks at issue, it is clear from the case-law that, the more immediately and strongly the mark is brought to mind by the sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark or is, or will be, detrimental to it (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 67-69; 18/06/2009, C-487/07, L’Oréal, EU:C:2009:378, § 44). Moreover, the stronger the distinctive character of the earlier mark, the more likely it is that, when confronted with a later similar mark, the relevant public will associate it with that earlier mark.

In the present case, the applicant’s trade mark is considered to bear irrefutable similarities to the opponent’s mark. As established above, the signs are visually and aurally similar to a high degree.

Second, the word ‘LIDL’ is meaningless and inherently distinctive for the services at issue. Moreover, the opponent’s sign, ‘LIDL’, is reputed among the relevant public.

Finally, with regard to the contested services in Class 35 (arranging and conducting fairs, exhibitions and events for business, advertising and publicity purposes), it is true that they differ from the opponent’s services for which it enjoys reputation (retailing of foodstuffs in Class 35). However, there is an overlap between the relevant publics for the services under the marks. The signs cover services that ultimately target the same end consumer and whose purpose is ultimately the same, namely the sale of goods. The conflicting services have some points in common, as retail services include, in addition to the legal sales transaction, all activity carried out by the trader for the purpose of encouraging the conclusion of such a transaction, and the contested services are aimed at promoting the launch and/or sale of a company’s product. Therefore, the services are sufficiently close to each other for a link to be established in the minds of consumers, given the similarity between the signs and the degree of recognition of the earlier mark.

Taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that when encountering the contested mark the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T-301/09, Citigate, EU:T:2012:473, § 96).

4. Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

∙        it takes unfair advantage of the distinctive character or the repute of the earlier mark;

∙        it is detrimental to the repute of the earlier mark;

∙        it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

The opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark and be detrimental to the distinctive character and repute of the earlier trade mark.

Before examining the opponent’s claims, it is appropriate to recall that the opposition is directed against the following remaining services:

Class 35: Arranging and conducting fairs, exhibitions and events for business, advertising and publicity purposes.

As seen above, the earlier trade mark was found to have a reputation for retailing of foodstuffs in Class 35.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40).

The opponent bases its claim on the following arguments. It has achieved recognition by the European public, in particular the German public, of its trade mark ‘LIDL’ as a guarantee for high-quality and low-priced goods. Establishing this recognition required enormous investments in constantly improving the assortment of goods offered to the public and promoting these offers. The investments in advertising were particularly significant, as shown in the evidence submitted. The earlier mark ‘LIDL’ is one of the top-ranking brands in Europe and in particular in Germany. Since the contested sign is highly similar to the earlier reputed trade mark, it is likely that the consumers will associate the signs. Furthermore, consumers are likely to transfer their high degree of confidence in the quality and reliability of the ‘LIDL’ trade mark to the services marketed under the contested sign, assuming that the opponent’s high quality and pricing standards apply to the services under the contested sign. The services offered by the applicant would thus benefit undeservedly from the reputation of the ‘LIDL’ trade mark and would take unfair advantage of the opponent’s enormous advertising expenditures.

According to the Court of Justice of the European Union, as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, insofar as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to the average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 36).

As seen above, there is a ‘link’ between the signs due to the similarity between the signs, the inherent distinctiveness and the reputation of the earlier mark, and the connections between the services. The proximity between the abovementioned services is such that an extension of the activities of foodstuffs retailers to the contested services in Class 35 would not be considered uncommon or awkward. On the contrary, the public would find it natural for the provider of such retail services to organise fairs, exhibitions and events to promote its business and to boost its sales. The applicant would derive direct benefit from the image of reliability conveyed by the earlier mark and this would make the introduction of its mark onto the market easier than that of a totally unknown mark. Therefore, there is a high probability that the use of the contested mark may lead to free-riding, that is to say, it would take unfair advantage of the established reputation of the earlier trade mark and the huge investments made by the opponent to achieve that reputation. The existence of such a probability, which has been established by the opponent, is sufficient for Article 8(5) EUTMR to apply.

On the basis of the above, the Opposition Division concludes that the contested trade mark is likely to take unfair advantage of the distinctive character or the repute of the earlier trade mark.

Other types of injury

The opponent also argues that use of the contested trade mark would be detrimental to the distinctive character and repute of the earlier trade mark.

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark. It follows that there is no need to examine whether other types also apply.

5. Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must be rejected for the remaining contested services in Class 35.

Given that the opposition is entirely successful under Article 8(1)(b) and Article 8(5) EUTMR, it is not necessary to examine the remaining ground on which the opposition was based, namely Article 8(4) EUTMR.

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

Catherine MEDINA

Frédérique SULPICE

Boyana NAYDENOVA

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.