OPPOSITION No B 2 531 377
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 15/03/2017, the Opposition Division takes the following
1. Opposition No B 2 531 377 is partially upheld, namely for the following contested goods:
Class 32: Beers; mineral waters; aerated waters; non-alcoholic beverages; fruit beverages; fruit juices; syrups for making beverages; preparations for making beverages.
Class 33: Alcoholic beverages (except beers).
2. International registration No 1 225 297 is refused protection in respect of the European Union for all of the above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
The opponent filed an opposition against all the goods of international registration designating the European Union No 1 225 297. 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 05/06/2015. 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 05/06/2010 to 04/06/2015 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 21/04/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 26/06/2016 to submit evidence of use of the earlier trade mark. On 06/06/2016, 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 30: Coffee; tea; cocoa; sugar; rice; tapioca; sago; artificial coffee; flours; preparations made from cereals; bread; pastry; confectionery; filled and unfilled chocolates; chocolate products (not included in other classes); candies; fruit gum; chewing gum (except for medical purposes); sweets; ices; honey; treacle; yeast; baking powder; salt; mustard; vinegar; sauces (condiments); spices; ice.
Class 32: Beers; mineral waters; aerated waters; non-alcoholic beverages; fruit beverages; fruit juices; syrups for making beverages; preparations for making beverages.
Class 33: Alcoholic beverages (except beers).
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 goods in this class are essentially various types of foodstuffs/beverages or ingredients for preparing food or beverages, and ice for cooling. The opponent’s liqueurs in Class 33 are alcoholic beverages with a relatively high alcohol content and a distinctive flavour. These goods are considered dissimilar. They have a different nature and purpose of use. They are neither in competition nor complementary. Moreover, the usual commercial origin of the goods is different and they are usually not sold next to each other in groceries or supermarkets.
The Opposition Division cannot accept the opponent’s arguments claiming similarity between the contested coffee, tea, cocoa, artificial coffee (as beverages) and the opponent’s goods. In addition to the above reasons, the alcohol content of the opponent’s liqueurs and the fact that coffee, tea, cocoa, artificial coffee are usually served warm are essential features of these goods that make them dissimilar from the consumer’s point of view.
The opponent also claims that sugar, spices and ice are used for making beverages and are, therefore, complementary to the opponent’s goods. The Opposition Division notes that the use of sugar, spices and ice is neither indispensable nor important for the consumption of liqueurs which means that they are not complementary.
Finally, the Opposition Division must dismiss the opponent’s arguments that goods such as pastry, confectionery, filled and unfilled chocolates and chocolate products can have the form of beverages or may contain beverages and should, therefore, be held similar to the opponent’s goods. First, this is more an exception than a rule. Second, the fact that the opponent’s liqueurs have a relatively high alcohol content is again an essential fact that argues against any similarity between those goods.
The decision of the Boards of Appeal referred to by the opponent (joined cases R 805/2008-1 and R 849/2008-1) where alcoholic beverages and coffee, tea, cocoa were found ‘identical or at least highly similar’ is a rather isolated decision which, and in light of all the above arguments, is not persuasive of similarity between the goods in the present case. In addition, that comparison concerns alcoholic beverages at large whereas the goods in the present case are much more specific, namely liqueurs.
Contested goods in Class 32
The contested beers are similar to the opponent’s liqueurs. Although their production processes are different, these goods all belong to the same category of alcoholic drinks intended for the general public which means that they coincide in nature and the relevant consumer. They can be served in restaurants and in bars and are on sale in supermarkets and grocery stores. These drinks can be found in the same section of supermarkets, although they can also be distinguished to some extent by subcategory. Consequently, they coincide also in their distribution channels.
The contested mineral waters; aerated waters; non-alcoholic beverages; fruit beverages; fruit juices in Class 32 on the one hand, and liqueurs in Class 33 on the other, are often sold side by side both in shops and bars and on drinks menus. Their distribution channels thus coincide. Furthermore, these goods target the same relevant consumer and may be in competition. They also coincide in their method of use. Therefore, they are similar to a low degree.
The contested syrups for making beverages; preparations for making beverages are similar to a low degree to the opponent’s liqueurs as they can coincide in relevant consumer, distribution channels and method of use.
Contested goods in Class 33
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 or similar (to various degrees) are directed at the public at large. The degree of attention will be between low and average. It will be low for the goods that are basic beverages for daily consumption such as aerated waters which are bought quite often and are inexpensive.
- 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).
The contested sign is a complex mark depicted in black, blue, golden and red colours.
A negligible element refers to an element that due to its size and/or position is not noticeable at first sight or is part of a complex sign. In the contested sign, there are numerous elements, such as ‘0,7l’ or the inscription ‘QUALITÄT AUS NORDHAUSEN’ that are barely perceptible. As these are likely to be disregarded by the relevant public, they will not be taken into consideration in the comparison of signs.
The element ‘NORD GOLD’ in the contested sign is the dominant element as it is the most eye-catching.
Although the elements ‘NORDPOL’ forming the earlier mark and ‘NORD GOLD’ in the contested sign 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 ‘NORD GOLD’ 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). Based on the above considerations, the aforesaid elements are distinctive.
As regards the contested sign, it is composed of several distinctive elements (‘NORD GOLD’ and the coat of arms at the top) and a less distinctive figurative element of a purely decorative nature, namely a label. Therefore, the aforesaid elements are more distinctive than the label. Furthermore, the small inscription ‘EXQUISIT‘ at the bottom of the mark is heavily allusive to the Spanish word ‘exquisito‘ which means ‘exquisite‘ and is, therefore, weak.
Visually, the signs coincide in ‘NORD(*)OL(*)’. These coincidences concern the entire earlier mark and the most dominant element of the contested sign (that is also a distinctive element). However, the marks differ in ‘P’/’G’, the additional letter ‘D’ at the end of the element ‘NORD GOLD’ and in the fact that ‘NORD GOLD’ is separated (written one underneath the other) in the contested sign. The marks also differ in the coat of arms in the contested sign, which is nevertheless quite small, and in the word ‘EXQUISIT’ and the label which are both weakly distinctive.
Therefore, the signs are visually similar to an average degree.
Aurally, it is very likely that the contested sign will be pronounced only by uttering the dominant element ‘NORD GOLD’ and that the remaining word elements, which are very small, will not be pronounced. Consequently, 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. On the whole, the marks have a very similar rhythm and intonation.
Therefore, the signs are aurally highly similar.
Conceptually, the elements ‘NORDPOL’ and ‘NORD GOLD’ have no readily perceptible meaning for a large part of the public in the relevant territory. Nevertheless, the public will grasp, at least, the concept of a coat of arms in the contested sign. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.
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 partially identical, partially similar, partially similar to a low degree and partially dissimilar. The earlier trade mark’s degree of distinctiveness is average and the degree of attention of the public will be between low and average.
The marks are visually similar to an average degree and aurally similar to a high degree on account of the elements ‘NORDPOL’ and ‘NORD GOLD’.
It should be borne in mind that the relevant goods are beverages and, since these are frequently ordered in noisy establishments (bars, nightclubs), the phonetic similarity between the signs is particularly relevant (see judgment of 15/01/2003, T-99/01, Mystery, EU:T:2003:7, § 48, which reflects this line of reasoning).
Consequently, the overall impression created by the marks is sufficiently similar to cause likelihood of confusion for the goods that are identical, similar or similar to a low degree for a significant part of the relevant public.
The holder claims aural and conceptual dissimilarity between the marks on the basis of German and English pronunciation and meaning of the elements ‘NORDPOL’ and ‘NORD GOLD’. 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 in the present case 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, therefor, 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 and therefore the opposition is partly well-founded on the basis of the opponent’s Spanish trade mark registration.
It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar (to various degrees) to those of the earlier trade mark.
The rest of the contested goods are dissimilar. As identity/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.
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
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.