OPPOSITION No B 2 603 671

Comercial Chocolates Lacasa S.A., Autovia Logroño Km. 14, 50180 Utebo (Zaragoza), Spain (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative).

a g a i n s t

AB Mauri Technology Pty Limited, Level 1, Building A 11 Talavera Road, North Ryde, New South Wales 2113, Australia (applicant), represented by A.A. Thornton & Co, 10 Old Bailey, London  EC4M 7NG, United Kingdom (professional representative).

On 25/01/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 603 671 is partially upheld, namely for the following contested goods:

Class 30:        Cereals and preparations made from cereals; bread.

2.        European Union trade mark application No 14 030 076 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 all the goods of European Union trade mark application No 14 030 076. The opposition is based on Spanish trade mark registration No 1 096 516, Spanish trade mark registration No 1 977 837, European trade mark registration No 59 618, Spanish trade mark registration No 2 936 801, European Union trade mark registration No 9 235 243 and European Union trade mark registration No 9 280 496. The opponent invoked Article 8(1)(b) EUTMR for all the earlier rights and also Article 8(1)(a) for Spanish trade mark registration No 1 977 837.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years 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 in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must be rejected.

The applicant requested that the opponent submit proof of use for some of the trade marks on which the opposition is based, namely Spanish trade mark No 1 096 516, Spanish trade mark No 1 977 837 and European Union trade mark No 59 618.

The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the publication of the contested application.

The contested application was published on 03/08/2015. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Spain and the European Union from 03/08/2010 to 02/08/2015 inclusive. Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely the following:

Spanish trade mark No 1 096 516

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

Spanish trade mark No 1 977 837, MAURIPAN

Class 30:        Natural goods to improve the quality of bakery goods and pastries, natural pastries, natural bakery additives and improvers.

European Union trade mark No 59 618, MAURI

Class 30:        Chocolates, bon-bons, sugar coated chocolate tablets, hard candy, nougat and confectionery.

According to Rule 22(3) EUTMIR, the evidence of use shall 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 22/01/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 22/03/2016 to submit evidence of use of the earlier trade marks. On 18/03/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Annex II: 19 invoices submitted by the opponent covering the time period 2009-2014. The invoices show sales to the value of around EUR 1200 made under the trade mark MAURI for goods identified as “SURTIDO”. The invoices are in Spanish (with a partial translation into English). The invoices are addressed to clients in Spain.
• Annex III: The opponent has also submitted a certificate from the General Manager, Mr. Vicente Maza Carcas, in which he certifies the cost for advertisement during the time period 2009-2014 and the sales volume under the same period. The advertisement cost was around EUR 290 000 and the sales volume around EUR 4 100 000. There is nothing in the documents that indicates if these figures are just related to Spain or also for other countries.
• Annex IV: The opponent has also submitted an extract from a magazine that displays some of the products they are selling. Some of the products have the brand MAURI on them. There is a handwritten date, October 2010, on the extract that, according to the opponent, is the date when the magazine was published.
• Annex V: A Google search on the brand MAURI with the addition of the non-distinctive word “caramelos” (in English “candy”). The search seems to have been made 23/10/2015 which is outside the relevant time period and is done in Spanish. The searches shows images of the opponent’s candy and hits related to the brand MAURI. Furthermore, the opponent submitted an extract from their website that shows some of the products they offer most containing the brand MAURI. The website is in Spanish and has the date 30/10/2015, which also is outside the relevant time period.
• Annex VI: All the submitted samples of packaging contain the brand MAURI. The samples have no date and the information on the packaging is in different languages, one of them being Spanish.

 

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, Google search, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.

As far as the certificate, written by Mr. Vicente Maza Carcas, is concerned, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(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 marks are 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, 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 submitted invoices show that the place of use is Spain. This can be inferred from the language of the documents (Spanish), the currency mentioned (Euro) and some addresses in Spain. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated or refers to dates within the relevant period, especially looking at the invoices.

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, 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 documents filed, namely the invoices, the extract in Annex III and the certificate all together, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. Although the invoices by themselves don’t show a high volume of sales the opponent has submitted three or four samples per year during the last five years. This combined with the written certificate and the extract is sufficient to show that the mark has been used in a not merely token way.

Use of the mark need not be quantitatively significant for it to be deemed genuine.

The evidence submitted by the opponent in order to prove genuine use of the earlier EUTM relates exclusively to Spain. As stated above, the territorial scope of the use is only one of several factors to be assessed in the determination of whether the use is genuine or not.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier Spanish figurative  trade mark No 1 096 516 and European Union trade mark No 59 618. However the opponent did not furnish any evidence concerning the use of the earlier Spanish trade mark, No 1 977 837 MAURIPAN, on which the opposition is also based. It did not argue that there were proper reasons for non-use either. Therefore, the Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the earlier trade mark MAURIPAN was genuinely used in the relevant territory during the relevant period of time.

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 Spanish figurative  trade mark No 1 096 516 and European Union trade mark No 59 618 during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade marks for all the goods covered by the earlier trade marks.

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 shall, 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 marks for the following goods:

Class 30:        Confectionery.

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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Spanish trade mark registration No 1 096 516.

1. The goods

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

Class 30:        Confectionery.

The contested goods are the following:

Class 30:         Yeast; yeast extracts; yeast products; yeast tablets and yeast in pill form; yeast improvers; yeast starters and conditioners; brewer's yeast; wine yeasts and dried wine yeasts; baking-powder; leaven; ferments for pastes; fermented cereals; cereals and preparations made from cereals; flour; flour products; flour based mixes and premixes; bakery mixes; bread; bread mixes; cake mixes; bread improvers and conditioners; cake improvers and conditioners.

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

The contested cereals and preparations made from cereals are similar to the opponent’s confectionery. The goods in question have the same provider and target the same public. The also share the same distribution channels.

The contested bread is similar to a low degree to the opponent’s confectionery in that they can have the same provider and that they target the same public. They also share the same distribution channels.

All the other goods of the contested mark are ingredients or preparations for making other goods whilst the opponent’s confectionery is a finished item. Therefore, these goods have a different purpose, different producer and distribution channels. The mere fact that an ingredient is needed for the preparation of a foodstuff will generally not be sufficient in itself to show that the goods are similar. As a result these goods are dissimilar to the opponent’s confectionery.

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 similar to various degrees are directed at the public at large. The degree of attention is considered to be average.

3. The signs

	MAURIPAN
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 figurative mark with the verbal element MAURI. The verbal element in white is surrounded by a red ellipse shaped frame with a golden border of a purely decorative nature. It should be noted that the three small words with lines which appear in the sign are the colour indications and do not form part of the sign. Considering this the figurative elements have a weak distinctiveness.

The contested sign is a word mark, MAURIPAN, which has no meaning in relation to the relevant goods.

The verbal element ‘MAURI’ in the earlier sign is the most distinctive element and it is also the dominant element as it is the most eye-catching.

Visually, the signs coincide in the letters ‘M-A-U-R-I’. However the contested sign consist of three additional letters ‘P-A-N’. Furthermore, the earlier sign also have some weak figurative elements.

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, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

The first parts of the conflicting marks are identical. In fact the verbal element of the earlier mark (which is the most distinctive and dominant element) is wholly included in the contested sign. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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 similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛M-A-U-R-I’, present identically in both signs. The pronunciation differs in the sound of the letters ‛P-A-N’ of the contested mark, which have no counterparts in the earlier sign.

Therefore, the signs are similar to an average degree.

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

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

4. Distinctiveness of the earlier mark

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

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

As stated above, the goods have been found partly similar to different degrees and partly dissimilar and they target the public at large with an average degree of attention. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness in relation to the relevant goods.

The signs at issue have been found both visually and aurally similar to an average degree. As neither of the signs has any meaning for the relevant public, the conceptual aspect will not contribute to the ability of consumers to distinguish the signs from one another.

Although the earlier mark has figurative elements they are, as stated above, considered to be weak compared to the verbal element as a whole. Furthermore, as the marks compared are both verbal and figurative marks with verbal elements, it should be recalled that the relevant consumers will usually refer to signs made up of word and figurative elements by their verbal elements and not by describing their stylisation. The differences are not sufficient to allow the relevant public to safely differentiate between the signs especially considering that the verbal element of the earlier mark is incorporated in the contested sign in its whole.

Both parties refer to a previous decision of the Office to support their 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 case referred to is not relevant to the present proceedings. The decision in that opposition was based on another earlier right. Additionally, the decision concerned slightly different goods.

Since the verbal element of the earlier sign is wholly incorporated in the contested sign and bearing in mind 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 Spanish trade mark registration No 1 096 516.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar to those of the earlier trade mark. The contested mark is also rejected for the goods found to be similar to a low degree as the similarities between the marks outweigh the low degree of the similarity between the goods.

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 opponent has also based its opposition on the following earlier trade marks:

• European trade mark registration No 59 618 for the word mark MAURI
• Spanish trade mark registration No 2 936 801 for the figurative mark  
• European trade mark registration No 9 235 243 for the figurative mark
• European trade mark registration No 9 280 496 for the figurative mark 

Since these marks cover the same scope of goods (they are registered or use was only proven for the category of confectionery and, in some cases, also various types of confectionery), the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

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 shall decide a different apportionment of costs.

Since the opposition is successful only for part 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

Benjamin Erik WINSNER

Vita VORONECKAITE

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.