OPPOSITION No B 2 692 278

Savencia Fromage & Dairy SK a.s., 1. mája 124, 031 80 Liptovský Mikuláš, Slovakia (opponent), represented by Černejová & Hrbek S.R.O., Kýčerského 7, 811 05 Bratislava, Slovakia (professional representative)

a g a i n s t

Konya Seker Sanayi ve Ticaret A.S., Beysehir Yolu Uzeri Merkez, Konya, Turkey, (applicant), represented by Murat Gisi, Dillener Strasse 1, 28777 Bremen, Germany, (professional representative).

On 12/10/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 692 278 is partially upheld, namely for the following contested goods:

Class 29:         Dairy products and dairy substitutes; Prepared soya.

2.        European Union trade mark application No 14 962 922 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 962 922 , namely against some of the goods in Classes 29 and 30. The opposition is based on Slovak trade mark No 197 749 ‘Lunex’. The opponent invoked Article 8(1)(b) EUTMR.

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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.

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, namely Slovak trade mark No. 197 749.

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

The date of filing of the contested application is 28/12/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Slovakia from 28/12/2010 to 27/12/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 29:        Dairy products; cheese; edible fats; fat substances for production of edible fats; fat dips for bread; eggs; yolk; dried eggs; tofu.

Class 30:         Puddings; ice cream.

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 15/11/2016, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, the Office gave the opponent until 20/01/2017 to submit evidence of use of the earlier trade mark. On 16/01/2017, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is the following:

•        Enclosure 1

This enclosure is a document prepared by the opponent and entitled ‘Current Portfolio of the Lunex Products in the Slovak Republic’. It includes pictures of the opponent’s goods such as cheese. The document is in English, except for the names of these products which are in Slovak (e.g. Lunex Lahodný or Lunex tavený syr). It bears no date.

•        Enclosure 2

This enclosure is a document prepared by the opponent and entitled ‘Brief History of Cheese Lunex in Slovakia’. It includes pictures of the opponent’s goods such as cream cheese showing the evolution of this brand over the last three decades. According to this document ‘the brand Lunex is one of the most known cheese brands in Slovakia due to its long time history and widespread use in the whole Slovakia’. The names of these products are in Slovak, such as Lunex Lahodný or Lunex tavený syr. The document itself bears no date of issue, however it contains some time references.

•        Enclosure 3

This enclosure covers copies of three leaflets with various products offered by supermarkets FRESH and TESCO. They include various goods, including those with LUNEX brand for cream cheese. Two of these documents come from the relevant period. All leaflets are in Slovak.

•        Enclosure 4

This enclosure covers copies of three delivery notes with several products issued by the opponent to various clients in Slovakia. They include goods with LUNEX brand, for example Lunex Šunka, Lunex Lahodny and Lunex Parenica. Two of these documents come from the relevant period. All delivery notes are in Slovak.

•        Enclosure 5

This enclosure covers copies of three invoices with several products issued by the opponent to various clients in Slovakia. They include goods with LUNEX brand, for example Lunex Šunka, Lunex Klasik and Lunex Parenica. All of these documents come from the relevant period and are in Slovak.

•        Enclosure 6

This enclosure is a document entiteled ‘Overview of Products Lunex Distribution in some of the Supermarkets and Wholesale Chains the Slovak Republic as Available on Internet as of January 2017’. It covers three print outs from the Internet presenting various goods such as cheese, including those with the brand LUNEX and offered by supermarkets METRO, TESCO and COOP JEDNOTA. All of these documents come from outside the relevant period and are in Slovak.

Assessment of evidence

The evidence concerning proof of use may cover the following documents, for example: invoices, price lists, affidavits, catalogues, surveys, turnover and sales figures, press clips, samples of products / packaging, advertisements, offers made to potential clients and other documents confirming that the mark was used genuinely on the market. The opponent submitted only some of the aforesaid documents, such as printouts from the Internet (being commercial offers), invoices, delivery notes, leaflets and own documents such as history of the LUNEX goods and portfolio of the LUNEX products. Some of the evidence presents pictures representing samples of products/packaging. It should be highlighted that the final outcome depends on the overall assessment of the evidence in the particular case.

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).

Place of use

The applicant’s request for proof of use concerns Slovak trade mark No. 197 749. Therefore, the relevant territory is Slovakia. The evidence shows that the place of use was exclusively Slovakia. This can be inferred from the language (i.e. Slovak) used in these materials, currency (EURO) and references made to the territory of Slovakia. In this respect the following documents should be referred to, for example the leaflets (Enclosure 3), delivery notes (Enclosure 4) and invoices (Enclosure 5). Therefore, this part of the evidence relates to the relevant territory, that is, Slovakia.

Time of use

Some of the evidence relates to the relevant period. However, the rest of the documents bear no date of issue (e.g. Enclosure 1) or come from outside the relevant period (e.g. Enclosure 6, one of the delivery notes in Enclosure 4 and one of the invoices in Enclosure 5).

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The only documents that pertain indirectly to the commercial volume achieved under the mark in question are the invoices and delivery notes. They refer to the relevant territories, some of the relevant goods and the relevant period of time.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier mark.

Nature of use

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered. The opponent’s earlier trade mark is a word marks and therefore may be used in any form. In most cases the earlier trade mark was used for instance as   or  and therefore they were used as registered. The use, although in a slightly fancy typeface, does not add to the distinct character of the earlier mark.

Overall assessment

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 territories.

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 marks. It should be noted that the opponent itself refers exclusively to cheese in its observations.

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 29:        Cheese.

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

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods

The goods on which the opposition is based and for which use has been proven are the following:

Class 29:        Cheese.

The contested goods are the following:

Class 29:          Dairy products and dairy substitutes; Birds eggs and egg products; Oils and fats; Dips, Prepared soya.

Class 30:        Desserts; Ice, ice creams, frozen yogurts and sorbets.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

CLASS 29

The contested dairy products includes, as a broader category, the opponent’s cheese. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested dairy substitutes, prepared soya are similar to a low degree to the opponent’s cheese. They can have the same end users and distribution channels. Furthermore, although some of the first are non-dairy goods while the latter are normally natural milk products, and therefore their origin is normally different, they can be in competition and complementary as well.

The contested birds eggs and egg products; oils and fats; dips are dissimilar to the opponent’s goods. They differ in their nature, purpose, producers and method of use. They are neither in competition with each other nor complementary to each other.

CLASS 30

The contested desserts; ice, ice creams, frozen yogurts and sorbets are dissimilar to the opponent’s goods. They differ in their nature, purpose, producers and method of use. They are neither in competition with each other nor complementary to each other.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or similar to a low degree are directed at the public at large. The degree of attention may vary from below average to average as these are rather cheap products purchased infrequently.

3. The signs

LUNEX
Earlier trade mark	Contested sign

The relevant territory is Slovakia.

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 earlier mark is a one word sign, namely ‘Lunex’. In the case of word marks, the word as such is protected and not its written form. Therefore, the use of upper or lower case letters is immaterial.

The contested sign is a figurative mark composed of a word ‘Lunix’ written in a slightly stylised manner. The sign’s figurative elements are its rectangular background in brown and stylisation of the letters, especially the letter ‘i’ resembling a candle.

The words in question are meaningless for the relevant public and therefore they are distinctive in relation to the relevant goods.

In addition, the signs, each consisting of one word, have no elements that could be considered clearly more distinctive or dominant (visually eye-catching) than other elements. It should be noted that the figurative elements of the contested sign are of a decorative character.

Visually, the signs coincide in ‘LUN*X’. However, they differ in their fourth letter ‘E’ and ‘I’ respectively. As explained above, the figurative elements of the contested sign are of decorative character.

Therefore, the signs are visually similar to an above average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛LUN*X’, present identically in both signs. The pronunciation differs in the sound of their fourth letters, namely ‘E’ and ‘I’ respectively. This difference can however even go unnoticed by the public as the vowels in question sound very similarly.  

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.

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.

The opponent, in its letter of 15/06/2017, claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 22).

The goods are identical, similar to a low degree and dissimilar, and they target the public at large, whose degree of attention may vary from below average to average. The signs are visually similar to an above average degree and aurally highly similar for the relevant public. The conceptual comparison is not possible. Furthermore, the earlier mark has a normal degree of distinctiveness.

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).

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). Therefore, even a low degree of similarity of the goods in Class 29 is compensated by a high degree of aural similarity and visual similarity to an above average degree of the signs under comparison.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the relevant public and therefore the opposition is partly well-founded on the basis of the opponent’s Slovak trade mark No 197 749.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to a low degree to those of the earlier trade mark.

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.

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).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are however not relevant to the present proceedings. They refer to other factual circumstances, for instance different trade marks under comparison (e.g. Lula vs Lola and KYKO vs KOKO).

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

Claudia ATTINA

Michal KRUK

Janja FELC

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.