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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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