OPPOSITION DIVISION
OPPOSITION No B 2 727 371
Heirler Cenovis GmbH, Schützenstraße 24, 78315 Radolfzell, Germany (opponent),
represented by Mitscherlich, Patent- und Rechtsanwälte, PartmbB, Sonnenstraße
33, 80331 München, Germany (professional representative)
a g a i n s t
EcoHouse Group OÜ, Peterburi tee 53-202, 11415 Tallinn, Estonia (applicant),
represented by AAA Patendibüroo OÜ, Tartu mnt 16, 10117 Tallinn, Estonia
(professional representative).
On 08/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 727 371 is partially upheld, namely for the following
contested goods:
Class 32: Beers; mineral and aerated waters and other non-alcoholic
beverages; fruit beverages and fruit juices; syrups and other preparations for
making beverages.
Class 33: Alcoholic beverages (except beers); anise [liqueur]; aperitifs; arak
[arrack]; bitters; brandy; distilled beverages; digesters [liqueurs and spirits]; gin;
kirsch; cocktails; curacao; liqueurs; hydromel [mead]; nira [sugarcane-based
alcoholic beverage]; spirits [beverages]; peppermint liqueurs; piquette; perry;
alcoholic beverages containing fruit; rice alcohol; rum; sake; cider; pre-mixed
alcoholic beverages, other than beer-based; wine; whisky; vodka.
2. European Union trade mark application No 15 231 624 is rejected for all the
above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
REASONS
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
Decision on Opposition No B 2 727 371 page: 2 of 16
The opponent filed an opposition against some of the goods of European Union trade
mark application No 15 231 624 for the figurative mark ,
namely against all the goods in Classes 32 and 33. The opposition is based on
European Union trade mark registration No 5 480 744 for the word mark ‘EDEN’. The
opponent invoked Article 8(1)(a) and (b) and Article 8(5) EUTMR.
PROOF OF USE
In accordance with Article 47(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.
The date of filing of the contested application is 17/03/2016. 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 17/03/2011 to 16/03/2016 inclusive.
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.
Decision on Opposition No B 2 727 371 page: 3 of 16
Furthermore, the evidence must show use of the trade mark for the goods on which
the opposition is based, namely the following:
Class 5: Pharmaceutical products; dietetic substances adapted for medical use, food
for babies.
Class 29: Preserved, frozen, dried and/or cooked fruits and vegetables, in particular
fruit pulp; fruit and vegetable sauces; jellies, in particular fruit jellies; jams, compotes,
fruit spreads, fruit desserts, in particular red fruit jelly and apple sauce; other fruit
preparations of all kinds, including in liquid form (included in class 29), in particular
fruit sauces, fruit mixtures; fruit and/or vegetable salads, in particular sauerkraut and
sauerkraut preparations; eggs, milk and milk products, in particular cheese, cheese
preparations with added legumes and/or cereals; milk and yoghurt ferments; soup
and/or bouillon, mainly containing fruit and/or vegetables, including in powder or
cube form; edible oils and fats, and oleaginous fruit and oil seeds, in particular
margarine, including the aforesaid goods being dietetic foods, not adapted for
medical use.
Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; beverages
with a base of artificial coffee, cocoa or chocolate, and preparations for making the
aforesaid beverages; honey, including spiced and/or with added fruit; bread, in
particular crisp bread; products with a cereal, nut and/or honey base, being spreads
(containing fats) and/or sandwich fillings; tofu; sauces (condiments), in particular
tomato sauces; tomato products of all kinds, in particular ketchup, tomato puree,
peeled, strained and chopped tomatoes; vinegar; bakery mixes, pastry, snacks,
included in class 30; puddings; sweeteners (natural) for sweetening foodstuffs and
beverages; cereal products with added fruit, in particular cereal flakes, cereal
preparations, cereal snacks; vegetarian snacks, namely meat substitute products
with a soya and/or cereal base, in particular vegetarian sausages, including as
spreads, nuggets, vegetarian rissoles, vegetarian meat balls, schnitzels, ham;
vegetarian prepared meals, namely soups and stews, mainly containing vegetables
and/or meat substitute products; including all the aforesaid goods being dietetic
foods, not adapted for medical purposes.
Class 31: Agricultural, horticultural and forestry products and grains, included in class
31; seeds, living plants; sprouts; fresh, processed fruits and vegetables; malt.
Class 32: Non-alcoholic beverages, in particular being substitutes for milk and milk
products, beverages with a fruit and vegetable base, including with additives,
including plant extracts, milk products and/or cereal products, in particular fruit juices,
nectars, must, fruit and vegetable cocktails (non-alcoholic); iced teas, in particular
with added fruit; unfermented spritzers, syrups and other preparations for making
beverages; non-alcoholic fruit punch (included in class 32) and other non-alcoholic
beverages made from wine and/or grape must, in particular non-alcoholic sparkling
wine; including all the aforesaid goods being dietetic foods, not adapted for medical
purposes.
According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before
01/10/2017), 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 or services in
respect of which it is registered and on which the opposition is based.
On 10/01/2017, in accordance with Article 10(2) EUTMDR (former Rule 22(2)
EUTMIR, in force before 01/10/2017), the Office gave the opponent until 10/03/2017
Decision on Opposition No B 2 727 371 page: 4 of 16
to submit evidence of use of the earlier trade mark. On 09/03/2017, within the time
limit, the opponent submitted evidence of use.
The evidence to be taken into account is the following:
Enclosure A: an affidavit in German from Frank von Glan, managing director of the
opponent, dated 20/02/2017 (English translation included) stating that the trade
mark ‘EDEN’ has been widely used especially for fruit juices and indicating the
sales figures for Austria and Germany in 2014 and 2015. The affidavit also
refers to some documents identified as enclosures A1 to A11 (English
translations included as attachments A1E to A11E):
o Attachment A1: a brochure dated 09/12/2015 with the sign
on top and on bottle labels. The mark ‘EDEN’ (word) is mentioned in
relation to bio-vegetable juices and must, smoothies and vegetable
cocktails with soy yoghurt;
o Attachments A2 and A3: two advertisements in the magazine
‘Reformhauskurier’ from December 2010 and November 2013
showing, inter alia, bottles of fruit punch with the label and
the price in euros;
o Attachment A4: the loyal-bonus brochure 2014 under the title ‘EDEN
vegetablejuices’,showingbottlesofjuicewiththelabel
and additional information on the benefits of this product for the body
(e.g. for the skin, blood pressure, immune system, metabolism and
digestibility). There is a list of the ‘EDEN’ bio products offered in the
nature of vegetable juices, fitness-K-cocktail and must;
o Attachment A5: a press article as regards the ‘vendor portrait EDEN’ in
the magazine ‘ReformhausKurier’, dated October 2014, showing the
sign and indicating that ‘the brand EDEN is an institution in
the health food store assortment’ with a wide variety of products for a
vegan and vegetarian diet (some images of food products bearing the
label are shown); there is a subtitle translated as ‘over 120
years of expertise’ with the content in German;
o Attachment A6: a price list of food products, dated November 2015, by
the sales company Pural Vertriebs GmbH located in Germany,
indicating the sign and the word mark ‘EDEN’ for fruit
syrup, must, punch, juices and vegetable juices;
o Attachment A7: an invoice dated 2015 with the heading
issued by the opponent to a client located in Germany describing, inter
alia, some juices with the abbreviation ‘ED’ and also mentioning the
mark ‘EDEN’, the amount and the price in euros;
o Attachment A8: some order confirmations with the heading
for ‘EDEN’ products from two German health food stores dated 2014;
Decision on Opposition No B 2 727 371 page: 5 of 16
o Attachment A9: a certificate showing that the ‘EDEN’ blueberry juice /
mother juice won an award of the German magazine ‘natürlich’, in
2015, in the category of beverages;
o Attachment A10: a press article from the magazine ‘Schrot & Korn’,
dated January 2017, which includes a subtitle ‘Berry power due to
mother juice’ and a reference to the mark ‘EDEN’;
o Attachment A11: a bottle of an ‘EDEN’ juice is shown under the
subtitle ‘Berry mother juices from the organic shop’ in the October
2016 edition of the magazine ‘Schrot & Korn’.
Within the substantiation period, the opponent filed some evidence in relation to the
reputation claimed for the earlier mark, which must be taken into account as well. In
particular, in its observations dated 07/11/2016, the opponent filed the following
documents:
o Exhibit A1: a press article from the website of ‘SIX Swiss Exchange’ with
information published on December 2014 about the company and indicating
the acquisition of the brands ‘EDEN’ and ‘granoVita’. It is also mentioned that
‘EDEN’ is pioneer in the sales of near natural foods with its offering a wide
range of organic and vegan products ranging from vegetable and fruit juices,
delicatessen and tomato sauces to seasonings;
o Exhibit A2: a copy from an online-shop of the German supermarket chain
named ‘Basic’, showing some samples of ‘EDEN’ products.
On 21/07/2017, after expiry of the time limit to submit proof of use, the opponent
submitted additional evidence.
Even though, according to Rule 22(2) EUTMIR (in force at the moment of filing the
request for proof of use), the opponent has to submit proof of use within a time limit
set by the Office, this cannot be interpreted as automatically preventing additional
evidence from being taken into account (18/07/2013, C-621/11 P, Fishbone,
EU:C:2013:484, § 28). The Office has to exercise the discretion conferred on it by
Article 95(2) EUTMR (18/07/2013, C-621/11 P, Fishbone, EU:C:2013:484, § 30).
The factors to be evaluated when exercising this discretion are, first, whether the
material that has been produced late is, on the face of it, likely to be relevant to the
outcome of the proceedings and, second, whether the stage of the proceedings at
which that late submission takes place, and the circumstances surrounding it, do not
argue against these matters being taken into account (18/07/2013, C-621/11 P,
Fishbone, EU:C:2013:484, § 33). The acceptance of additional belated evidence is
unlikely where the opponent has abused the time limits set by knowingly employing
delaying tactics or by demonstrating manifest negligence (18/07/2013, C-621/11 P,
Fishbone, EU:C:2013:484, § 36).
In this regard, the Office considers that the opponent did submit relevant evidence
within the time limit initially set by the Office and, therefore, the later evidence can be
considered to be additional.
The fact that the applicant disputed the initial evidence submitted by the opponent
justifies the submission of additional evidence in reply to the objection (29/09/2011,
Decision on Opposition No B 2 727 371 page: 6 of 16
T-415/09, Fishbone, EU:T:2011:550, § 30 and 33, upheld by judgment of 18/07/2013,
C-621/11 P, Fishbone, EU:C:2013:484, § 36). Furthermore, the additional evidence
merely strengthens and clarifies the evidence submitted initially, as it does not
introduce new elements of evidence but merely enhances the conclusiveness of the
evidence submitted within the time limit.
For the above reasons, and in the exercise of its discretion pursuant to Article 95(2)
EUTMR, the Office, therefore, decides to take into account the additional evidence
submitted on 21/07/2017.
In this regard, in relation to the attachment A4, as per the translation/clarification
provided by the opponent on 21/07/2017 (in reply to the applicant’s observations),
the brochure invites the customers to participate in a loyalty-bonus-program by
sending lids of juice bottles in order to win two ‘EDEN’ glasses (an image shown).
Contact details in Germany (D) and Austria (AT) are provided. The promotion
campaign lasted from 01/02/2014 to 15/04/2014 and was restricted to Germany
(Deutschland) and Austria (Österreich).
As regards the last two attachments, A10 and A11, the opponent states that it is all
about a promotion of a lottery. In particular, the customer shall choose the best fruit
juice among the eight juices presented on the left side (attachment A11) and even
taste the juices directly in approximately 200 stores. According to the translation
provided by the opponent, the ‘EDEN’ blueberry juice (Heidelbeersaft) was rated
second (attachment A10).
As far as the affidavit (enclosure A) is concerned, Article 10(4) EUTMDR (former
Rule 22(4) EUTMIR, in force before 01/10/2017) expressly mentions written
statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of
use. Article 97(1)(f) EUTMR lists means of giving evidence, amongst which are sworn
or affirmed written statements or other statements that have a similar effect according
to the law of the State in which they have been drawn up. As far as the probative
value of this kind of evidence is concerned, statements drawn up by the interested
parties themselves or their employees are generally given less weight than
independent evidence. This is because the perception of the party involved in the
dispute may be more or less affected by its personal interests in the matter.
However, this does not mean that such statements do not have any probative value
at all.
The final outcome depends on the overall assessment of the evidence in the
particular case. This is because, in general, further evidence is necessary to
establish use, since such statements have to be considered as having less probative
value than physical evidence (labels, packaging, etc.) or evidence originating from
independent sources.
Bearing in mind the foregoing, it is necessary to assess the remaining evidence to
see whether or not the contents of the declaration are supported by the other items of
evidence.
The applicant argues that not all the items of evidence indicate genuine use in terms
of time, place, extent, nature and use of the goods for which the earlier mark is
registered.
The applicant’s argument is based on an individual assessment of each item of
evidence regarding all the relevant factors. However, when assessing genuine use,
Decision on Opposition No B 2 727 371 page: 7 of 16
the Opposition Division must consider the evidence in its entirety. Even if some
relevant factors are lacking in some items of evidence, the combination of all the
relevant factors in all the items of evidence may still indicate genuine use.
The brochures (attachments A1 and A4), advertisements (attachments A2 and A3),
press article (attachment A5), price lists (attachment A6), the invoice (attachment A7)
and the order confirmations (attachment A8), and the certificate of an award
(attachment A9), show that the place of use is Germany and Austria. This can be
inferred from the language of the documents (German), the currency mentioned
(euros) and some addresses in these Member States. Therefore, the evidence
relates to the relevant territory.
Although the opponent has only submitted one invoice (attachment A7) and some
order confirmations (attachment A8), they are all dated within the relevant period
(2014 and 2015) and they include sufficient indications in relation to the earlier mark
(both in the heading and in the description of the items), the identification (article
number), the kind (e.g. Heidelbeersaft bio juice, must and syrup) and characteristics
of the goods (the millilitres, quantity and unitary price), and the payment conditions.
The invoice also includes the number of the invoice (Rechn. Nr. 961001). Therefore,
it is evident that the opponent has presented these documents by way of an example
of the commercial activity around the products bearing the trade mark ‘EDEN’.
As regards the distribution of the brochures, price lists and magazines contested by
the applicant, as per the translation/clarification provided by the opponent on
21/07/2017, according to the media data 2015, the nine-year old magazine ‘natürlich’
was distributed in approximately 1,500 sales points, with approximately 500,000
copies per month and about one million readers (attachment A13); according to the
media data 2014, 1,500 sales points distributed the ‘Reformhauskurier’ (the 65
years-old magazine of Reformhaus store) and a monthly circulation of around
600,000 copies (attachments A14 to A16).
Most of the evidence is dated within the relevant period.
Evidence referring to use made outside the relevant timeframe is disregarded unless
it contains conclusive indirect proof that the mark must have been put to genuine use
during the relevant period of time as well. Events subsequent to the relevant time
period may make it possible to confirm or better assess the extent to which the
earlier mark was used during the relevant time period and the real intentions of the
EUTM proprietor at that time (27/01/2004, C-259/02, Laboratoire de la mer,
EU:C:2004:50).
Contrary to the applicant’s claim, in the present case, the evidence referring to use
outside the relevant period confirms use of the opponent’s mark within the relevant
period. This is because either the use it refers to is very close in time to the relevant
period, as is the case for the advertisement in the magazine ‘Reformhauskurier’ from
December 2010 (attachment A2), or because it refers to a continuation of use well
after the relevant period, as is the case of the press articles of the magazine ‘Schrot
& Korn’ from October 2016 (attachment A11) and January 2017 (attachment A10).
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, and its
commercial volume, duration and frequency.
Decision on Opposition No B 2 727 371 page: 8 of 16
The assessment of genuine use entails a degree of interdependence between the
factors taken into account. Thus, the fact that the 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.
The documents filed, namely the brochures, advertisements, press articles, price
lists, together with the invoice and the order confirmations, provide the Opposition
Division with sufficient information concerning the commercial volume, the territorial
scope, the duration, and the frequency of use.
Use of the mark need not be quantitatively significant for it to be deemed genuine.
Although the evidence indicates a low commercial volume, it shows use of the EUTM
in two Member States, namely Germany and Austria.
Therefore, the Opposition Division considers that the opponent has provided
sufficient indications concerning the extent of use of the earlier mark.
The evidence shows that the mark has been used in accordance with its function and
as registered. In particular, the documents submitted by the opponent include the
earlier mark ‘EDEN’ as a word mark. Furthermore, in some cases, it is also
accompanied by the figurative signs , and , which
however do not alter the distinctive character of the word mark ‘EDEN’.
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, although the evidence submitted by
the opponent is not particularly exhaustive, it does reach the minimum level
necessary to establish 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 47(2) EUTMR, if the earlier trade mark has been used in relation
to only some 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
those goods or services.
In the present case, the evidence shows genuine use of the trade mark for the
following goods:
Class 32: Non-alcoholic beverages, in particular fruit juices, nectars, must, fruit and
vegetable cocktails (non-alcoholic); syrups; non-alcoholic fruit punch (included in
class 32); including all the aforesaid goods being dietetic foods, not adapted for
medical purposes.
Decision on Opposition No B 2 727 371 page: 9 of 16
None of the evidence makes a reference to the other goods included in Class 32.
Furthermore, the documents submitted by the opponent do not provide any use as
regards the goods protected in Classes 5, 29, 30 and 31, also subject to the
requirement of proof of use.
Therefore, the Opposition Division will only consider the abovementioned goods in
Class 32 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.
a) The goods
The goods on which the opposition is based are the following:
Class 32: Non-alcoholic beverages, in particular fruit juices, nectars, must, fruit and
vegetable cocktails (non-alcoholic); syrups; non-alcoholic fruit punch (included in
class 32); including all the aforesaid goods being dietetic foods, not adapted for
medical purposes.
The contested goods are the following:
Class 32: Beers; mineral and aerated waters and other non-alcoholic beverages; fruit
beverages and fruit juices; syrups and other preparations for making beverages.
Class 33: Alcoholic beverages (except beers); fruit extracts, alcoholic; anise [liqueur];
aperitifs; arak [arrack]; bitters; brandy; distilled beverages; digesters [liqueurs and
spirits]; gin; kirsch; cocktails; curacao; liqueurs; hydromel [mead]; nira [sugarcane-
based alcoholic beverage]; alcoholic extracts; alcoholic essences; spirits
[beverages]; peppermint liqueurs; piquette; perry; alcoholic beverages containing
fruit; rice alcohol; rum; sake; cider; pre-mixed alcoholic beverages, other than beer-
based; wine; whisky; vodka.
An interpretation of the wording of the list of goods is required to determine the scope
of protection of these goods.
The terms ‘in particular’ and ‘including’, used in the opponent’s list of goods, indicate
that the specific goods are only examples of items included in the category and that
protection is not restricted to them. In other words, they introduce a non-exhaustive
list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
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
Decision on Opposition No B 2 727 371 page: 10 of 16
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 32
Fruit juices; syrups are identically contained in both lists of goods.
The contested mineral and aerated waters and other non-alcoholic beverages; fruit
beverages are included in the broad category of the opponent’s non-alcoholic
beverages, in particular fruit juices, must, fruit and vegetable cocktails (non-
alcoholic); including all the aforesaid goods being dietetic foods, not adapted for
medical purposes. Therefore, they are identical.
The contested beers; other preparations for making beverages are similar to a high
degree to the opponent’s non-alcoholic beverages, in particular fruit juices, must, fruit
and vegetable cocktails (non-alcoholic); including all the aforesaid goods being
dietetic foods, not adapted for medical purposes, since they have the same purpose.
They can originate from the same producers, use the same distribution channels and
target the same end users. Furthermore, they are in competition.
Contested goods in Class 33
The contested alcoholic beverages (except beers); anise [liqueur]; aperitifs; arak
[arrack]; bitters; brandy; distilled beverages; digesters [liqueurs and spirits]; gin;
kirsch; cocktails; curacao; liqueurs; hydromel [mead]; nira [sugarcane-based
alcoholic beverage]; spirits [beverages]; peppermint liqueurs; piquette; perry;
alcoholic beverages containing fruit; rice alcohol; rum; sake; cider; pre-mixed
alcoholic beverages, other than beer-based; wine; whisky; vodka are all alcoholic
beverages and, therefore, they are similar to a low degree to the opponent’s non-
alcoholic beverages, in particular fruit juices, must, fruit and vegetable cocktails (non-
alcoholic); including all the aforesaid goods being dietetic foods, not adapted for
medical purposes in Class 32, as they can target the same end users, use the same
distribution channels and coincide in the method of use. Furthermore, they are in
competition.
However, the contested fruit extracts, alcoholic; alcoholic extracts; alcoholic
essences serve as flavourings or base ingredients for alcoholic beverages. They are
mainly destined for manufacturers and used in the production process. Therefore,
they are considered dissimilar to the opponent’s goods in Class 32, which are various
types of non-alcoholic beverages. They differ in their nature, purpose and method of
use. Furthermore, they are neither complementary nor in competition with each other.
b) 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 identical or similar to varying degrees are
directed at the public at large. The degree of attention is considered average.
Decision on Opposition No B 2 727 371 page: 11 of 16
c) The signs
EDEN
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 word element ‘EDEN’ present in both signs will be understood by a significant
part of the relevant public as ‘the garden in which Adam and Eve were placed at the
Creation; a paradise’ (information extracted from Collins English Dictionary online on
31/10/2017 at www.collinsdictionary.com). This word is distinctive in relation to the
relevant goods in Classes 32 and 33. For the remaining part of the public for which
this element is meaningless, it is also distinctive.
The word element ‘Lost’ in the contested sign, due to its small size, the colour used
and the place it occupies within the sign (mixed with the branches of the tree), will not
be easily perceived by the whole relevant public. For the part of the public that will
identify and understand the meaning of this English word as ‘something that no
longer exists’ (see Collins English Dictionary online), it is distinctive in relation to the
relevant goods. In the case of the public that will identify this element as a
meaningless word, it is also distinctive.
The figurative element in the contested sign will be perceived as a leafy tree with
some fruits, flanked with two peacocks. Since the sign combines these particular
components with the word ‘Eden’, the figurative element of the sign will evoke the
idea of ‘paradise’, as defined above, at least in respect of a significant part of the
public, namely those who understand the meaning of ‘Eden’. Bearing in mind that
some of the relevant goods are fruit beverages, the element depicting a tree with
fruits is considered weak for part of these goods, namely for fruit beverages and fruit
juices; alcoholic beverages containing fruit and cider. As regards the two peacocks
depicted in the sign, they have no relation to the relevant goods and are, therefore,
distinctive.
The figurative element of the contested sign overshadows the verbal elements of the
mark by virtue of its central position and size. The figurative element is the visually
dominant element of the contested trade mark.
However, 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,
Decision on Opposition No B 2 727 371 page: 12 of 16
EU:T:2005:289, § 37). This is particularly true in the case of the contested sign, since
the tree is dominant but a weak element and the peacocks are not more dominant
than the word ‘Eden’.
Visually, the signs coincide in the word ‘EDEN’, which is the only element of the
earlier mark and the most visible word element in the contested sign by virtue of its
central position and size. However, they differ in the figurative element of the
contested sign, as explained above, the colours used and the stylisation of the letters
in this sign. Furthermore, the signs differ in the verbal element ‘Lost’ of the contested
sign, which is however clearly secondary and even hardly perceivable by a part of
the public.
Therefore, the signs are visually similar al least to a low degree.
Aurally, irrespective of the different pronunciation rules in different parts of the
relevant territory, the pronunciation of the signs coincides in the syllables ‛E-DEN’,
present identically in both signs. For that part of the public that will perceive the word
‘Lost’ in the contested sign, the pronunciation differs in this syllable, which has no
counterpart in the contested sign.
Therefore, from an aural perspective, the signs are either identical or similar to an
average degree.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. For a part of the public that will perceive and
understand the respective word elements of the signs, as well as the figurative
element of the contested sign, as they will be associated with a similar meaning, the
signs are conceptually highly similar.
For the minority part of the public for which the verbal elements of the signs are
meaningless, although the figurative element of the contested sign will be perceived
as a leafy tree with some fruits, flanked with two peacocks, the other sign has no
meaning. For this part of the public, 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.
d) 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 trade mark has a reputation in the European
Union in connection with all the goods for which it is registered. This claim must be
properly considered given that the distinctiveness of the earlier trade mark must be
taken into account in the assessment of likelihood of confusion. Indeed, the more
distinctive the earlier mark, the greater will be the likelihood of confusion, and
therefore marks with a highly distinctive character because of the recognition 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).
As explained in the previous section on the proof of use, in its observations dated
07/11/2016, the opponent submitted the following evidence:
Decision on Opposition No B 2 727 371 page: 13 of 16
o Exhibit A1: a press article from the website of ‘SIX Swiss Exchange’ with
information published on December 2014 about the company and indicating
the acquisition of the brands ‘EDEN’ and ‘granoVita’;
o Exhibit A2: a copy from an online-shop of the German supermarket chain
named ‘Basic’, showing some samples of ‘EDEN’ products.
As regards exhibit A1, the opponent emphasizes the reference to the assessment
that ‘the business is expected to generate a turnover of around EUR 17 million’
contained therein. Such an expression refers to ‘EDEN’ and ‘granoVita’ together, as
well as to the clients’ lists and the inventory of products. This document refers to both
brands as being ‘strong and well-established brands that stand for 100 years of
expertise in health food. It is further mentioned that ‘EDEN’ is pioneer in the sales of
near natural foods with its offering a wide range of organic and vegan products
ranging from vegetable and fruit juices, delicatessen and tomato sauces to
seasonings.
The opponent completes the evidence on reputation with exhibit A2, a sample of the
use in commerce of the ‘EDEN’ products in one of the leading supermarket chains in
the sale of organic food in Germany.
From the two pieces of evidence submitted by the opponent consisting of three
pages in total with very limited information, the Opposition Division concludes that
there is insufficient evidence to support a finding of either reputation or enhanced
distinctiveness of the earlier trade mark.
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 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.
e) Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on
numerous elements and, in particular, on the recognition of the earlier mark on the
market, the association which can be made with the registered mark, the degree of
similarity between the marks and between the goods or services identified (recital 8
of the EUTMR). It must be appreciated globally, taking into account all factors
relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik,
EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
Such a global assessment of likelihood of confusion implies some interdependence
between the relevant factors and, in particular, similarity between the trade marks
and between the goods or services. Accordingly, a greater degree of similarity
between the goods may be offset by a lower degree of similarity between the marks,
and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19;
11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon,
EU:C:1998:442, § 17).
As it has been found in the previous sections of the present decision, the goods are
partly identical, partly similar to varying degrees and partly dissimilar, the relevant
public has an average degree of attention and the earlier mark enjoys a normal
degree of distinctive character.
Decision on Opposition No B 2 727 371 page: 14 of 16
The signs are visually similar al least to a low degree and aurally either identical or
similar to an average degree, depending on the perception of the secondary word
element ‘Lost’ of the contested sign. As a rule, when the earlier trade mark is wholly
incorporated in the contested sign and performs an independent and distinctive role
therein, this is an indication that the two signs are similar (13/06/2012, T-519/10, SG
Seikoh Giken, EU:T:2012:291, § 27; 24/01/2012, T-260/08, Visual Map,
EU:T:2012:23, § 32; 22/05/2012, T-179/11, Seven Summits, EU:T:2012:254, § 26).
For the majority of the public the signs are conceptually highly similar. For a minority
part of the public for which the verbal elements of the signs are meaningless, the
signs are not conceptually similar.
Furthermore, the category of goods involved may increase the importance of one of
the different aspects considered when assessing the degree of similarity between
signs. It should be borne in mind that the relevant goods are beverages and, since
these are frequently ordered in noisy establishments (bars, nightclubs), the phonetic
similarity between the signs is particularly relevant (15/01/2003, T-99/01, Mystery,
EU:T:2003:7, § 48, which reflects this line of reasoning).
In addition, the manner in which the goods are marketed increases the likelihood that
the consumer will not be able to inspect the mark on the label and that their order will
be placed exclusively by means of a spoken request. In the present case, when the
goods are ordered orally under the abovementioned circumstances, the likelihood of
confusion between the marks increases, since they differ only in the additional
syllable ‘Lost’ of the contested mark for those who will perceive it, due to its small
size within the sign, as explained above.
Furthermore, likelihood of confusion covers situations where the consumer directly
confuses the trade marks themselves, or where the consumer makes a connection
between the conflicting signs and assumes that the goods/services covered are from
the same or economically linked undertakings. In the present case, when
encountering the conflicting signs, it is highly conceivable that the relevant consumer
will perceive the contested mark as a sub-brand, a variation of the earlier mark,
configured in a different way according to the type of goods that it designates
(23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
Therefore, although the coincidences in the signs are less obvious than the
differences, a likelihood of confusion still exists, as the coinciding element plays an
independent distinctive role in both signs.
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). In this respect, the goods
considered identical and similar to varying degrees compensate the lesser degree of
similarity found between the signs in some of the three aspects of comparison.
Considering all the above, the Opposition Division finds that there is a likelihood of
confusion on the part of the public and, therefore, the opposition is partly well
founded on the basis of the opponent’s European Union trade mark registration.
It follows from the above that the contested trade mark must be rejected for the
goods found to be identical or similar to those of the earlier trade mark. The
Decision on Opposition No B 2 727 371 page: 15 of 16
opposition is also successful insofar as the goods that are similar to a low degree are
concerned, as there is a real probability that the public will associate a same origin
for the goods in question.
The rest of the contested goods 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 goods cannot be successful.
For the sake of completeness, it must be mentioned that the opposition must also fail
insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the
remaining goods because the signs are obviously not identical.
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 for 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: 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.
Decision on Opposition No B 2 727 371 page: 16 of 16
a) Reputation of the earlier trade mark
The evidence submitted by the opponent to prove the reputation and highly
distinctive character of the earlier trade mark has already been examined 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.
As the Opposition Division has found that the evidence submitted by the opponent
does not demonstrate that the earlier trade mark acquired a reputation, the
opposition on this ground must fail.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 109(3)
EUTMR, where each party succeeds on some heads and fails on others, or if
reasons of equity so dictate, the Opposition Division will decide a different
apportionment of costs.
Since the opposition is successful for only some of the contested goods, both parties
have succeeded on some heads and failed on others. Consequently, each party has
to bear its own costs.
The Opposition Division
Ric WASLEY Marta GARCÍA COLLADO Richard BIANCHI
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.