OPPOSITION No B 2 562 380
Super B, S.L., C/ Francisco Redondo García 10, 45600 Talavera de la Reina (Toledo), Spain (opponent), represented by Balder IP Law, S.L., Paseo de la Castellana 93, 28046 Madrid, Spain (professional representative)
a g a i n s t
Nordbrand Nordhausen GmbH, Bahnhofstr. 25, 99734 Nordhausen/Harz, Germany
On 22/06/2017, the Opposition Division takes the following
1. Opposition No B 2 562 380 is upheld for all the contested goods.
2. International registration No 1 086 415 is entirely refused protection in respect of the European Union.
3. The holder bears the costs, fixed at EUR 650.
The opponent filed an opposition against all the goods of international registration designating the European Union No 1 086 415. The opposition is based on Spanish trade mark registration No 1 717 495. 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 shall 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 shall be rejected.
For international registrations designating the European Union, the ‘date of publication’ of the contested mark within the meaning of Article 42(2) EUTMR, that is to say for the purposes of establishing the five-year period of use obligation for the earlier mark, is considered to be six months after the first republication of the international registration, which corresponds to the beginning of the opposition period (Article 156 EUTMR in conjunction with Article 152 EUTMR, in the version in force at the time of filing of the opposition). The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.
The holder requested that the opponent submit proof of use of the trade mark on which the opposition is based.
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 relevant date (first republication of the contested international registration plus six months) is 24/09/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 24/09/2010 to 23/09/2015 inclusive.
Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:
Class 33: Alcoholic beverages (except beer).
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 05/07/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 10/09/2016 to submit evidence of use of the earlier trade mark. On 26/08/2016, 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:
- A1-A6: dozens of invoices for the sale of ‘NORDPOL’ goods to a number of clients throughout Spain in 2010-2015.
- B 1: invoices issued by the opponent’s suppliers in relation to the ‘NORDPOL’ goods in 2010-2015.
- B 2: a number of labels for ‘NORDPOL’ liqueur.
- B 3: invoices concerning the opponent’s promotion materials and activities, dated 2010-2015.
- C: photographs of various ‘NORDPOL’ merchandising products.
- D: print-outs from the opponent’s website with information about various ‘NORDPOL’ liqueurs.
- E: Google search results mentioning ‘NORDPOL’ liqueurs.
- F: several catalogues of the opponent’s goods showing ‘NORDPOL’ liqueurs among other opponent’s alcoholic beverages.
- G: examples of stationery used by the opponent where the mark ‘NORDPOL’ appears.
The invoices show that the place of use is Spain. This can be inferred from the language of the documents (Spanish) and some addresses in Spain. Therefore, the evidence relates to the relevant territory.
Although many of the pieces of evidence are undated, most of the invoices are dated within the relevant period.
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. The invoices prove constant and frequent sales of sufficient quantities of the ‘NORDPOL’ liqueurs throughout the entire relevant period.
The evidence shows that the mark has been used essentially as registered for the goods for which the mark 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, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).
Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove 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 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.
According to case-law, when applying the abovementioned provision the following should be considered:
…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.
Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.
(14/07/2005, T-126/03, Aladin, EU:T:2005:288).
In the present case, the evidence proves use only for a range of various fruit liqueurs. Based on their nature, these goods can be considered to fall within an objective subcategory of alcoholic beverages (except beer), namely liqueurs. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for liqueurs in Class 33.
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 goods
The goods on which the opposition is based are the following:
Class 33: Liqueurs.
The contested goods are the following:
Class 33: Alcoholic beverages (except beers).
The contested alcoholic beverages (except beers) include, as broader category, the opponent’s liqueurs in Class 33. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
- 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 are directed at the public at large. The degree of attention will be average.
- The signs
Earlier trade mark
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).
Although the elements ‘NORDPOL’ and ‘Nordgold’, forming the earlier and the contested mark, respectively, might be allusive for a part of the Spanish public, there is still a sufficiently large part of the Spanish public for whom neither ‘NORDPOL’ nor ‘Nordgold’ have any readily perceivable meaning. This is because these words do not exist in Spanish and the public will not thoroughly analyse the marks to search for any possible meanings. Consequently, for reasons of procedural economy, the assessment of likelihood of confusion will focus on this part of the public (that constitutes a significant part of the public in Spain). If a significant part of the relevant public for the goods at issue may be confused about the origin of the goods, this is sufficient to establish a likelihood of confusion. It is not necessary that it be established that all actual or potential consumers of the relevant goods are likely to be confused. Based on the above considerations, the aforesaid elements are distinctive.
The fact that the earlier trade mark is depicted in upper case and the contested sign in title case has no bearing on the comparison of the marks, because both are word marks. Protection is therefore granted/sought for the word itself, and not for the particular way in which the mark is written.
Visually, the signs coincide in ‘NORD*OL*’ and differ only in the letters ‘P’/’G’ and in the additional letter ‘D’ at the end of the contested sign. Moreover, the marks have the same structure (one word) and a similar length (seven letters as opposed to eight letters).
Therefore, the signs are visually similar to a high degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘NORD*OL*’, identically present in both signs. The pronunciation differs in the sound of the letters ‘P’/’G’ and the sound of the additional letter ‘D’ in the contested sign. As a whole, the marks have a very similar rhythm and intonation.
Therefore, the signs are aurally highly similar.
Conceptually, the elements ‘NORDPOL’ and ‘Nordgold’ have no readily perceptible meaning for a large part of 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.
- 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.
- Global assessment, other arguments and conclusion
The goods are identical. The marks are visually and aurally similar to a high degree. There is nothing to link or differentiate the marks conceptually for a large part of the relevant public.
The earlier trade mark’s degree of distinctiveness is average and the degree of attention of the public will be average as well.
Consequently, the overall impressions created by the marks are clearly similar enough to cause likelihood of confusion for the identical goods for a significant part of the relevant public.
The holder claims aural and conceptual dissimilarity between the marks on the basis of the German and English pronunciation and meaning of the elements ‘NORDPOL’ and ‘NORDGOLD’. However, since the relevant territory is Spain, and a significant part of the Spanish public will not readily attribute any meaning to the aforementioned elements, the considerations based on the English or German language are irrelevant.
In its observations, the holder argues that the element ‘NORD’ of the earlier trade mark has a low distinctive character given that there are many trade marks that include this element (or a similar one such as ‘NORTH’ or ‘NORTE’). In support of its argument the holder refers to several trade mark registrations in Germany, European Union or Spain.
The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘NORD’. Under these circumstances, the holder’s claims must be set aside.
The holder also asserts that the word ‘NORD’ is used to describe alcoholic beverages (as coming from the North) and is not very fanciful. The Opposition Division considers that for a significant part of the Spanish public the word ‘NORD’ has no readily perceptible meaning and is, therefore, normally distinctive. In addition, it should be borne in mind that the public primarily perceives the marks as a whole and does not analyse their details.
The holder 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 holder are not persuasive of lack of confusion because they concern cases with different factual circumstances (different marks, different words or different territories).
The holder also claims that the opponent did not substantiate the opposition because it did not submit a registration extract. In this context the Opposition Division observes that the opponent submitted, in due time, an extract from the official on-line database of the Spanish Patent and Trade Mark Office with all the necessary information about the earlier Spanish trade mark, accompanied by an English translation. Consequently, the earlier trade mark has been duly substantiated.
Finally, the holder argues that the proof of use of the earlier trade mark was submitted on a CD and not in paper form and is, therefore, inadmissible and the opposition should be rejected. The Opposition Division observes that the applicable rules for taking of evidence in proof of use proceedings, in particular Rule 22(4) EUTMIR, Rule 79 and 79a EUTMIR and Article 78 EUTMR, do not preclude documents from being filed on a CD. Consequently, the holder’s argument must be dismissed.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public. As regards the focus on a part of the relevant public, as outlined above, there is no need to establish that all actual or potential consumers of the relevant goods are likely to be confused.
Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 1 717 495. It follows that the contested trade mark must be rejected for all the contested goods.
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 holder is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
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.