OPPOSITION No B 2 593 781

Juan Antonio Arruabarrena Arruabarrena, c/ Hiribarren, s/n, 20210 Lazkao (Guipuzcoa), Spain (opponent), represented by Ipamark S.L., Paseo de la Castellana, 72-1º, 28046 Madrid, Spain (professional representative)

a g a i n s t

Klaus Körner e.K., Bahnhofstr. 11, 66606 St. Wendel, Germany (applicant), represented by Freischem & Partner Patentanwälte mbB, Salierring 47-53, 50677 Köln, Germany (professional representative).

On 31/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 593 781 is partially upheld, namely for the following contested goods and services:

Class 30:         Preparations made from cereals; bread, pastry and confectionery; edible ices; candy.

Class 35:        Retailing and wholesaling, including via the internet, of foodstuffs.

2.        European Union trade mark application No 13 964 697 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 964 697, namely against all the goods and services in Classes 30 and 35. The opposition is based on European Union trade mark registration No 4 324 992. The opponent invoked Article 8(1)(b) 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 the trade mark on which the opposition is based, namely European Union trade mark No 4 324 992.

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

The contested application was published on 14/07/2015. 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 14/07/2010 to 13/07/2015 inclusive.

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

Class 30:        Pastry and confectionery.

According to Rule 22(3) EUTMIR, 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 and services in respect of which it is registered and on which the opposition is based.

On 11/07/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 23/09/2016 to submit evidence of use of the earlier trade mark. The initial deadline was extended until 23/11/2016. On 23/11/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Document 1: several invoices issued to clients in Spain, dated between 18/01/2012 and 12/12/2012, mentioning products such as, inter alia, ‘manina’, referring to pastry products. At the top of each invoice,  is depicted as the company logo.

• Document 2: several invoices issued to clients in France, Germany, Italy and Portugal, covering 2010-2015, mentioning products such as, inter alia, ‘manina’, referring to pastry products. At the top of each invoice,  is depicted as the company logo.

• Document 3: pictures of labels and the packaging of pastry products, containing the mark ‘manina’, together with  as the company logo.

• Document 4: extracts from the opponent’s websites www.arruabarrena.com, www.bonarea.com and www.comercialmatiner.com showing pastry products sold under the mark ‘manina’.

The applicant argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR). Taking into account the nature of the documents which have not been translated and are considered relevant for the present proceedings, namely, the invoices, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.

The invoices show that the place of use is the European Union. This can be inferred from the language of the documents (Spanish) and some addresses in France, Italy, Germany, Portugal and Spain. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period.

The Court of Justice has held that ‘use of the mark need not always be quantitatively significant for it to be deemed genuine, as that depends on the characteristics of the goods or service concerned on the corresponding market’ (11/03/2003, C-40/01, Minimax, EU:C:2003:145).

As far as this indication is concerned, the General Court has stated that ‘account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use’ (08/07/2004, T-334/01, Hipoviton, EU:T:2004:223).

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’ (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225).

The documents filed, namely the invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use of the earlier mark, ‘manina’. The applicant argues that the price of the goods sold under the mark ‘manina’ is redacted in the invoices and that they do not constitute proof that more than samples of the goods were sold. The Opposition Division does not agree with the applicant and considers that, on each invoice, the quantity of the goods sold under the mark ‘manina’ is mentioned. Moreover, the invoices cover 2010-2015. The opponent is not asked or expected to file each and every invoice issued and to file invoices that contain all of the information, such as the prices and the total amount (it could keep this information confidential, as the opponent did). The sample invoices submitted are distributed throughout the relevant period and, therefore, show that the use has been continual; moreover, the invoice numbers are not consecutive, which implies that there were other invoices issued in between.

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 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; 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

According to Article 15(1), second subparagraph, point (a) EUTMR, the following shall also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the trade mark ‘MANINA’ was used as such on the labels of goods or is mentioned in the invoices. The use of  at the top of the invoices or on the labels does not alter the distinctive character of the mark ‘MANINA’ in the form in which it was registered.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

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

In the present case, the evidence shows genuine use of the trade mark for the following goods:

Class 30:        Pastry.

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 and services

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

Class 30:        Pastry.

The contested goods and services are the following:

Class 30: Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; edible ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; candy; ice.

Class 35: Advertising; business management; business administration; office functions; retailing and wholesaling, including via the internet, of foodstuffs, beverages, clothing and fashion articles, namely clothing, clocks, watches and jewellery, shoes, fashion accessories and textile goods.

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

The term ‘namely’, used in the applicant’s list of 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 services.

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 30

Pastry is identically contained in both lists of goods.

The contested preparations made from cereals include, as a broader category, the opponent’s pastry. 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 bread; confectionery; edible ices and candy are sweet or savoury baked goods that have the same intended purpose (they are for direct consumption) as the opponent’s pastry. They can be eaten as sweet or savoury snacks. They may have the same distribution channels and public as the opponent’s confectionery, since they may be offered in the same bakeries, cafeterias, bars, etc. Furthermore, they may be in competition with each other and it is possible that they could originate from the same manufacturer. Therefore, the goods are similar.

The contested coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice are dissimilar to the opponent’s pastry. Their purposes and distribution channels are different, as are their natures and methods of use. Furthermore, these goods are neither in competition nor complementary.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public. Therefore, the contested retailing and wholesaling, including via the internet, of foodstuffs are similar to a low degree to the opponent’s pastry in Class 30, which is a foodstuff.

The same does not apply to the contested retailing and wholesaling, including via the internet, of beverages, clothing and fashion articles, namely clothing, clocks, watches and jewellery, shoes, fashion accessories and textile goods. These services are dissimilar to the opponent’s pastry. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are dissimilar.

The rest of the contested services, namely advertising; business management; business administration; office functions, are very specific services and are usually rendered by specialist companies such as business consultants. These services are dissimilar to the opponent’s pastry. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. These goods and services have different purposes. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

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 different degrees are directed at the public at large.

The degree of attention is low to average, as most of the relevant goods are products for daily consumption.

3. The signs

MANINA	MANIN
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).

Both marks are word marks.

The element ‘MANIN’ of the contested sign has no meaning for the relevant public and is, therefore, distinctive.

The element ‘MANINA’ of the earlier mark will be perceived by the Italian-speaking part of the public as ‘little hand’ (information extracted from Treccani Dizionario on 18/07/2017 at http://www.treccani.it/vocabolario/ricerca/manina/). The applicant argues that the opponent’s pastry products have the shape of a little hand and for this reason the word is descriptive. The Opposition Division does not agree with the applicant, as pastry could be any shape, including that of a little hand. Furthermore, for the rest of the relevant public, this element is meaningless. As this element is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

Visually, the signs coincide in the letter sequence ‘MANIN’, which is the first five of six letters of the earlier mark and the entire contested mark. However, they differ in the final letter ‘A’ of the earlier mark. 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.

Therefore, the signs are visually highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛M-A-N-I-N’, present identically in both signs. The pronunciation differs in the sound of the final letter ‘A’ of the earlier sign, which has no counterpart in the contested mark.

Therefore, the signs are aurally highly similar.

Conceptually, although the Italian-speaking part of the public will perceive the meaning of the earlier mark, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. For the rest of the relevant public, neither of the signs has a meaning. 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.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

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 goods and services are partly identical or similar to different degrees and partly dissimilar and are directed at the public at large with a low to average degree of attention.

The signs are visually and aurally highly similar to the extent that they coincide in the letter sequence ‘MANIN’, which constitutes the entire contested mark. On the other hand, the signs differ in the final letter ‘A’ of the earlier sign.

The first parts of the words in the conflicting marks are identical. As was mentioned above, consumers generally tend to focus on the first element of a sign when encountering a trade mark. Consequently, the identical first five letters of the marks at issue have to be taken into account when assessing the likelihood of confusion between the marks.

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).

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. Indeed, 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 or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

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 and services found to be identical or similar, even to a low degree, to those of the earlier trade mark.

The rest of the contested goods and 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 goods and services cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Cristina CRESPO MOLTO

Francesca DRAGOSTIN

Janja FELC

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.