OPPOSITION No B 2 675 133

Multilap, Zone Artisanale, 49230 Saint-Crespin-sur-Moine, France (opponent), represented by Ipside, 7-9, Allées Haussmann, 33300 Bordeaux, France (professional representative)

a g a i n s t

Südpack Verpackungen GmbH & Co. KG, Jägerstr. 23, 88416 Ochsenhausen, Germany (holder), represented by Friedrich Graf von Westphalen & Partner mbB, Kaiser-Joseph-Str. 284, 79098 Freiburg, Germany (professional representative).

On 05/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 675 133 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods of international registration No 1 251 257 ‘Multilap’ designating the European Union, namely against all the goods in Classes 16 and 20. The opposition is based on the company name ‘MULTILAP’ used in the course of trade in France. The opponent invoked Article 8(4) EUTMR.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a)        rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b)        that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

1. The right under the applicable law

The opposition is based on a company name used in the course of trade in France.

The opponent has submitted an excerpt from the French Trade and Companies Register (Kbis excerpt), in French with a translation into English, showing that the company name ‘MULTILAP’ has been registered since 1990.

The opponent has also submitted a translation of the applicable provision from the French Intellectual Property Code into the language of the proceedings, namely English, as well as the applicable provision in the original language.

The article in question reads as follows:

Article L711-4

Signs may not be adopted as marks where they infringe earlier rights, particularly:

a) An earlier mark that has been registered or that is well known within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property;

b) The name or style of a company, where there is a risk of confusion in the public mind;

c) A trade name or signboard known throughout the national territory, where there exists a risk of confusion in the public mind;

d) A protected appellation of origin;

e) Authors’ rights;

f) Rights deriving from a protected industrial design;

g) The personality rights of another person, particularly his surname, pseudonym or likeness;

h) The name, image or repute of a local authority.

Article 8(4) EUTMR explicitly requires a right that confers on its proprietor the right to prohibit use of a subsequent mark. The Office, however, applies the provision broadly, based on an interpretation oriented by its purpose, meaning that an opposition based on provisions of national law on the prohibition of a later registration can also be accepted in some cases. In several cases, the General Court and the Boards of Appeal accepted that a provision prohibiting registration of a subsequent trade mark can be validly invoked within the opposition pursuant to Article 8(4) EUTMR. For example, in the decision of 14/07/2014, R 0187/2002-4, MAISON BOUCHARD PERE & FILS, the Boards explicitly accepted the abovementioned provision of the French Intellectual Property Code as a valid basis for opposition under Article 8(4) EUTMR. The Boards referred to the judgment of 28/11/1998 of the Tribunal de Grande Instance de Paris (High Court of Paris) confirming that, under the French law, ‘a corporate name permitted prohibition of the use of a more recent trade mark’. According to this judgment, ‘a sign infringing earlier rights and in particular a corporate name could not be adopted as a trade mark if there was a likelihood of confusion on the part of the public’. The opponent also argues that, according to the judgment of the European Union Tribunal (21/10/2014, T-453/11, LAGUIOLE, ECLI:EU:T:2014:901, § 37), ‘it is not disputed that the right to obtain the annulment of a subsequent trade mark based on a business name encompasses a fortiori the right to oppose the use of that trade mark’. In the opponent’s view ‘the company name or style of a company (“denomination sociale” “raison sociale”) is considered as such sign’.

However, the opponent did not provide the Office with any further guidance on how to interpret and apply the national provisions it relies upon.

2. The opponent’s right vis-à-vis the contested trade mark

As explained above, the conditions under which the registration of a subsequent trade mark may be prohibited have to be fulfilled in respect of the contested trade mark. This is one of the cumulative conditions that have to be satisfied.

As mentioned above, the opposition is based on the company name ‘MULTILAP’ used in the course of trade in France and, according to French law, company names are protected against subsequent trade marks if a likelihood of confusion exists. The provisions under national law invoked by the opponent, namely Article L711-4 of the French Intellectual Property Code, appear to require the presence of a likelihood of confusion (‘a risk of confusion in the public mind’).

The criteria developed by the courts and by the Office with regard to likelihood of confusion under Article 8(1)(b) EUTMR can be applied mutatis mutandis when examining likelihood of confusion under Article 8(4) EUTMR. Therefore, identity or similarity between the signs and identity or similarity between the goods or services are required.

Under 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. The identity or similarity of the goods or services and the identity or similarity of the signs are necessary conditions for a finding of likelihood of confusion.

The opponent claims that the signs are identical and that the goods and services are similar.

As a first step, a comparison of the goods and services has to be undertaken.

The goods and services

According to the opponent, the earlier company name is used in the course of trade in France in connection with slaughtering of poultry and rabbits, buying and selling of rabbit meat, poultry meat and by-products of rabbits and poultry, production of rabbits.

The opposition is directed against the following goods of the contested sign:

Class 16:        Plastic material for packaging (not included in other classes); packaging materials, namely films of plastics; printed and unprinted plastic foils for packaging; foil bags of plastic for industrial and medical products; plastic materials for packaging, namely foils and foil bags; vacuum packaging bags and packaging containers of plastic filled with protective gas for industrial packaging; packaging of plastic for foodstuffs and medical products, namely bags and foils.

Class 20:        Containers of plastic for packaging; packaging of plastic for foodstuffs, namely plastic trays, boxes and containers, being disposable or reusable containers, included in this class.

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.

The term ‘namely’, used in the holder’s list of goods 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 goods.

Contested goods in Class 16 and Class 20

The contested goods are various types of plastic packaging materials (in Class 16) as well as other types of packaging, namely trays, boxes and containers, made of plastic (in Class 20).

The opponent argues that it sells rabbits, poultry and meat. According to the opponent, ‘these products are mainly sold in bulk, raw, with no developed packaging and no particular visual elements’. The opponent maintains that ‘the sticker and the invoices are the main elements where the prior sign MULTILAP is put’.

In the opponent’s view, ‘in the event a customer of the opponent’s products … buys meat from the opponent’s company and reads the applicant’s trademark MULTILAP on the packaging sold by the applicant … it cannot be otherwise that a confusion is created between the opponent’s products contained in the applicant’s packaging labelled with the exact same trademark’. Moreover, the opponent claims that there is a link of complementarity between the contested packaging items and its own meat.

According to the opponent, in view of the above, there is necessarily a likelihood of confusion because consumers seeing the contested trade mark ‘MULTILAP’ on packaging for meat may believe that the meat has been produced by its own company. It adds that if ‘a problem happens with the packaging sold by the applicant, which contains the opponent’s products, the opponent can be unfairly questioned or accused regarding … problem caused by the applicant’s goods’.

The opponent’s arguments are based on a specific situation within the market. However, the comparison of the goods and services must be based on the wording indicated in the respective lists of goods/services. Any actual or intended use not stipulated in the list of goods/services is not relevant for the comparison, since this comparison is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and against which it is directed; it is not an assessment of actual confusion or infringement (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71).

The contested goods in Class 16 and 20 differ from the opponent’s slaughtering of poultry and rabbits, buying and selling of rabbit meat, poultry meat and by-products of rabbits and poultry, production of rabbits in their natures, purposes, usual origins and distribution channels and are neither complementary nor in competition. In particular, as regards the factor of complementarity, goods (or services) are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (11/05/2011, T-74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T-558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T-504/11, Dignitude, EU:T:2013:57, § 44). This is not the case as regards the goods and services at issue.

Therefore, the contested goods are deemed dissimilar to the opponent’s slaughtering of poultry and rabbits, buying and selling of rabbit meat, poultry meat and by-products of rabbits and poultry, production of rabbits.

CONCLUSION

Since the goods and services are clearly dissimilar, one of the necessary conditions for likelihood of confusion, which is also one of the requirements for a successful application of Article 8(4) in the present case, is not fulfilled.

Therefore, the opposition must be rejected as unfounded. There is no need to examine the other requirements mentioned above. In particular, there is no need to examine whether or not the opponent has proven that the earlier sign was used in the course of trade of more than local significance in connection with the goods and services on which the opposition based.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the holder in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Catherine MEDINA

Michal KRUK

Natascha GALPERIN

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.