OPPOSITION No B 2 791 823
Panzani SAS, 4, rue Boileau, 69006 Lyon, France (opponent), represented by María José Garreta Rodríguez, Aribau, 155, bajos, 08036 Barcelona, Spain (professional representative)
a g a i n s t
Panzo Pizza Limited, Flat 9, 110 Elm Park Gardens, London SW10 9PF, United Kingdom (applicant), represented by Trade Mark Direct, 4 Grove Park Studios, 188-192 Sutton Court Road, Chiswick, London W4 3HR, United Kingdom (professional representative).
On 23/08/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 791 823 is upheld for all the contested goods and services.
2. European Union trade mark application No 15 507 676 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 507 676 ‘Panzo’. The opposition is based on, inter alia, French trade mark registration No 1 247 001 ‘PANZANI’. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.
REPUTATION – ARTICLE 8(5) EUTMR
The opponent claims that earlier French trade mark registration No 1 247 001 is reputed in France for goods in Classes 29 and 30. However, at this point, the Opposition Division finds it appropriate to first examine the opponent’s claims under Article 8(5) EUTMR in relation to the following registered goods in Class 30:
Class 30: Flour and preparations made from cereals, pasta in all forms, ravioli, cannelloni, prepared sauces.
The contested goods and services are the following:
Class 29: Olive oils; meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; cheeses; milk and milk products; edible oils and fats; prepared salads; antipasto salads; vegetable salads.
Class 30: Pizza; fresh pizza; pizza sauce; pizza sauces; uncooked pizzas; chilled pizzas; prepared pizza meals; sauces for pizzas; preparations for making pizza bases; prepared meals in the form of pizzas; sauces; sauces for pasta; sauces [condiments]; prepared pasta; sauces [condiments]; salad dressings; pasta salads; rice salads.
Class 43: Pizza parlours; pizza restaurant services; provision of food and drink; information in relation to all the aforesaid services.
According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.
- The signs must be either identical or similar.
- The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.
- Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.
The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.
In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.
The Opposition Division will first examine the reputation claimed by the opponent for the earlier mark.
- Reputation of the earlier trade mark
According to the opponent, the earlier trade mark has a reputation in France.
Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.
In the present case the contested trade mark was filed on 05/06/2016. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in France prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:
Class 30: Flour and preparations made from cereals, pasta in all forms, ravioli, cannelloni, prepared sauces.
In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.
On 20/02/2017, the opponent submitted the following evidence:
- Seven invoices, dated between 02/04/2010 and 14/11/2014, issued by the opponent to companies located in France (Savigny Le Temple Cedex, Évry). The opponent explains in its submission that these are ‘just a few examples of invoices of sales from PANZANI to very important retailers’. The invoiced goods are described as follows: ‘Panzani Fusilli’, ‘Panzani Capellini’, ‘Panzani Farfalle KG’, ‘PZ Penne.Tomate’, etc. The amounts invoiced vary between EUR 7 879 and EUR 26 252 per invoice (mostly above EUR 20 000). Furthermore, in the top left corner of each invoice the sign
is depicted, below or on the right-hand side of which appear the address and contact details of the company.
- Six excerpts from press articles in French (with partial translation in English), dated between 29/01/2015 and 01/03/2016; two articles dated after the relevant date, namely on 06/06/2016 and 17/06/2016, and one undated article bearing only the printing date (08/12/2016). The latter one only provides information on the cooking specifics of the pasta ‘Panzani Plus’. The articles, dated before the relevant date are from the following sources: ´Maxi´, stating that ´[t]he market of pastas in France is very prized, and many reputed trademarks mainly Italian try to win a good place in our shelves and plates. The leader: PANZANI’; ‘Réussir Grandes Cultures’, stating that ‘Panzani is the favourite brand of the French people, as it represented the 35,4% of the sales in 2014, towards the 24,7% for the trademarks of the distributors, 21,3% of Barilla and 9,4% of Lustucru’; ‘LSA Commerce & Consommation’, giving the following information: ‘[a] study on the favourite trademarks for the French consumer of 2014 has recently been published, on occasion of the publication of the Big book the trademarks foreseen for October 2015. LSA gives you as avant-premier the results of the survey carried out by Toluna, analysis of experts […] here, the podium in 2014 by fields:- Food field: Lu, PANZANI, Danette’; ‘LINEAiRES’, providing information on ‘THE STAR OF THE SAUCES for pastas, la bolognaise enjoys all attentions of the manufacturers. PANZANI in the head. The launches multiply to the results of the appointment’; ‘lejournal’, which gives information on the start of the brand ‘Panzani’ and the numerous acquisitions of the company. It is also stated that during the years after 1973 ‘the company diversified its products: sauces, bases culinaires, pasta and quick cook’; radins.com, containing article entitled ‘The 10 brands more consumed in France’. In the ranking of ‘the trademarks that the French consumer buys the most’, ‘Panzani’ is placed on the 5th place.
- Press cuttings dated 06/06/2016 and 17/06/2016 stating the following: ‘This range of pasta Panzani Kneaded and shaped like fresh pasta have generated a turnover of 6,6M€ according to Mintel in 62 weeks […] Panzani Quality Fresh Pasta: fettuccini, farfalle and tagliatelle kneaded and shape like fresh pasta, are recommended by the restorers themselves’ (source www.processalimentaire.com) and ‘7 French trademarks position themselves within the top 50 of the most chosen trademarks in France. Performed by Kants (Brand Footprint 2016)’ (source ‘Le Manager’). The latter source places ‘Panzani’ in fifth position after ‘Coca Cola’.
- Untranslated articles (in French), from several different sources, namely ‘Le Chef’, ‘L’Hotellerie’, ‘LINEAiRES’, ‘L’Auvergnat’, ‘France Dimanche’, ‘LSA’ and ‘Cuisine Actuelle’.
- Excerpts from brochures in French, dated 2014, 2015 and 2016. The signs
and
appear on boxes and packets of pasta and on jars and bottles of sauces.
- Studies and reports: a study undertaken by Toluna, entitled ‘le Grand Livre des Marques volume III’. The study notes that it was carried out on over 5 500 people in July/August 2014. It gives ‘Panzani’ as the ‘second favourite brand of the French people (all categories inclusive) in 2014’. A study entitled ‘Food Top 10 Preferred Brands a Womenology/Marmiton Study’. It gives a list of brands and places
- An excerpt from ‘The Big Catalogue of Brands’ (undated), referring to the survey provided by Toluna described above (conducted in 2014). The excerpt states that the book provides information on ‘some of the major brands naturally the closest to the hearts and minds of the French people’. Under the title ‘Humanized brands’ there is information about the brands that are ‘humanising themselves on by promoting employees’. There are different brands and slogans depicted in the text and one of them states ‘Pasta, yes, but Panzani’.
In its submissions, the opponent further claims a high volume of worldwide annual sales and significant advertising expenditure, and submits tables in this regard showing the amounts claimed between 2009 and 2013.
On the basis of the above, the Opposition Division concludes that the earlier trade mark has a reputation in France for pasta in all forms.
With regard to the documents submitted in a language different from the language of the proceedings (i.e. several articles from ‘Le Chef’, ‘L’Hotellerie’, ‘LINEAiRES’, ‘L’Auvergnat’, ‘France Dimanche’, ‘LSA’ and ‘Cuisine Actuelle’ and excerpts from brochures), pursuant to Rule 19(2)(c), Rule 19(3) and Rule 98 EUTMIR, the evidence that the earlier right has a reputation must be filed in the language of the proceedings or accompanied by a translation within the time limit for substantiation of the earlier right on which the opposition is based. In the present case, the deadline for the opponent to substantiate its earlier right was 02/03/2017. The opponent did not submit a translation of the articles and brochures in question. According to Rule 19(4) EUTMIR, the Office shall not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.
Since the articles mentioned above that are not in the language of the proceedings are part of the evidence submitted to substantiate the earlier mark with a reputation, it follows that as a translation of neither the documents as a whole nor a material part of them was submitted within the substantiation deadline, these cannot be taken into account in the present proceedings. As far as the excerpts from brochures are concerned, the Opposition Division will take into account only the parts of the evidence that were filed in the language of proceedings (e.g. parts of the text or references in English) or are at least self-explanatory (e.g. images, depictions of the mark, publication and printing dates, etc.).
The translated evidence (and excerpts thereof) indicates that the earlier trade mark has been used for a substantial period of time. It is apparent that the relevant public has been widely exposed to the earlier sign, as is suggested by the depiction and evaluation of the sign by different press sources. Furthermore, the public’s awareness of the earlier sign is reflected in a number of surveys.
The earliest reference to the recognition of the earlier mark by the public is February 2009 (in ‘Awareness Gauge of Panzani Brand’, provided by Ifop). It continues with a number of sources confirming the stable position of the earlier mark in the mind of the relevant consumer, as it is named the ‘2nd most preferred brand of the French people’ (survey conducted by Toluna in 2014). It is also included in the ‘The Big Catalogue of Brands’ among ‘the major brands naturally the closest to the hearts and minds of the French people’. The brand is further defined as ‘the favourite brand of the French people’ representing ‘35,4% of the sales in 2014’ (‘Réussir Grandes Cultures’).
The acknowledgement the brand receives from the relevant public continues over the following years, as confirmed by a number of articles from different sources, citing ‘PANZANI’ as the leader in the pasta market (‘Maxi’). It is also ranked fifth in the ‘the 10 brands more consumed in France’ (radins.com).
Even the two press articles dated after the relevant date refer to the relevant timeframe and further suggest that the recognition of ‘PANZANI’ is ongoing. This can be inferred from the excerpt from www.processalimentaire.com (dated 06/06/2016), which mentions a turnover of EUR 6.6 million reached for a period of 62 weeks in relation to a variety of ‘PANZANI’ pasta. These sources continue to place ‘Panzani’ among ‘the most chosen trademarks in France’ (‘Le Manager’, 17/06/2016).
The earlier sign has received extensive coverage in the press and has been the subject of studies and rankings, showing significant exposure of the public to the sign. Furthermore, examples of the commercial use of the opponent’s goods are given, namely the figures in the invoices submitted, most of which amount to more than EUR 20 000 per invoice. The significant market presence claimed by the opponent is confirmed by the percentages and sales quoted in the press cuttings (namely EUR 6.6 million over 62 weeks, as explained in the excerpt from www.processalimentaire.com, and the opponent’s brand representing ´35,4% of the sales in 2014’, stated by ‘Réussir Grandes Cultures’).
Although some of the articles mentioned postdate the filing date of the contested sign, they appear to be relevant. Given that reputation is usually built up over a period of years and cannot simply be turned on or off, and certain kinds of evidence (e.g. opinion polls, rankings) are not necessarily available before the relevant date, as they are usually prepared only after the dispute arises, so such evidence must be evaluated on the basis of its content and in conjunction with the rest of the evidence. In the present case, the articles referring to a period after the relevant date demonstrate a sufficiently high degree of recognition and, in combination with the rest of the evidence (the articles and surveys), show that the market conditions have not changed, namely that the earlier sign still enjoys a significant degree of recognition among the public in France.
The submitted evidence depicts the earlier mark ‘PANZANI’ the way it is registered, as a number of the submitted studies and articles refer to ‘PANZANI’ along with some of the relevant goods in a standard typeface. While it is true that in addition to the word mark ‘PANZANI’, the evidence also shows the sign ‘PANZANI’ in a figurative script with some additional elements (e.g. ), the Opposition Division finds that the submitted evidence listed above and referring to the word mark ‘PANZANI’ is sufficient to conclude that reputation is proven for the earlier French trade mark registration No 1 247 001.
Taken together, the documents submitted are connected in a logical sequence. They also demonstrate the long-standing presence of the earlier sign in the relevant market. Therefore, in an overall assessment of the evidence submitted – namely the high degree of brand awareness demonstrated by evidence from independent sources (rankings in the press) and the variety of surveys and reports – the Opposition Division concludes that the earlier mark has been proven to enjoy a high degree of recognition among the relevant public in France.
However, the evidence does not succeed in establishing that the trade mark has a reputation for all the goods in Class 30 on which the opposition is based and for which reputation has been claimed. The evidence mainly relates to pasta in all forms, as the majority of the advertising and sales efforts are related to those goods, which have led to awareness and recognition of the earlier mark among the relevant public explicitly for those goods (as the articles and surveys submitted demonstrate).
As far as the rest of the goods are concerned, although there is evidence pointing to the use of the mark for some of those goods as well (e.g. prepared sauces), it does not suffice to show the degree of awareness of the relevant public for the earlier sign in regard to those goods, and therefore it could not be concluded that the earlier mark is reputed for them.
- The signs
|
PANZANI |
Panzo |
|
Earlier trade mark |
Contested sign |
The relevant territory is France.
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 signs are word marks. The earlier mark consists of the element ‘PANZANI’ and the contested sign consists of the element ‘Panzo’. In the case of word marks, it is the word as such that is protected, and not its written form. Therefore, the use of upper or lower case letters is immaterial. Neither of the elements of the signs has any particular meaning for the relevant public and both are therefore distinctive.
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 coinciding first four letters of the signs, namely ‘PANZ’, have to be taken into account in the following comparison.
Visually and aurally, the signs coincide in the sequence (and the sounds) of the letters ‘PANZ’, being the first four letters out of seven in the earlier mark and out of five in the contested sign. However, they differ in the final three letters (and the sounds of these letters) of the earlier mark, namely ‘ANI’, in comparison with the final letter (and sound) ‘o’ of the contested sign.
Bearing in mind what has been said above regarding the coinciding beginning of the signs and the distinctiveness of their elements, it is considered that the signs are visually and aurally 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 the opposition on the ground of Article 8(5) EUTMR will proceed.
- The ‘link’ between the signs
As seen above, the earlier mark is reputed and the signs are similar to some extent. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.
Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):
∙ the degree of similarity between the signs;
∙ the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;
∙ the strength of the earlier mark’s reputation;
∙ the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;
∙ the existence of likelihood of confusion on the part of the public.
This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.
In the present case, both signs contain the sequence of letters ‘PANZ’, being the first four letters out of seven in the earlier mark and out of five in the contested sign, rendering the signs visually and aurally similar to an average degree. Therefore, this commonality between the sole verbal elements of the signs, which are distinctive for the goods and services at issue, is of material importance when assessing the ‘link’ between the conflicting marks.
As seen above, the earlier sign is also a reputed mark in France. Therefore, when relevant consumers perceive the contested sign ‘Panzo’, they will establish a link between it and the opponent’s reputed mark. This will very clearly be the case when the contested sign is used on goods that relate to food products and preparations thereof, namely the contested foodstuffs in Classes 29 and 30, as all these goods belong to the same market of foodstuffs.
This also applies to drinks (beverages) in Class 29 (e.g. milk and a variety of milk beverages, as the contested milk products could be beverages), which are also intended for human consumption and are often provided along with foodstuffs. All these goods belong to the market of food and drinks for consumption, that is, they are goods used for the general purpose of satisfying nutritional needs. It is also common nowadays for producers who make foodstuffs to expand into different varieties of foodstuffs and into beverages (drinks). The contested goods and the opponent’s goods for which reputation has been proven must be considered in the context of the current practice in the market, and account must be taken of the fact that foodstuffs and beverages belong to proximate, if not quasi-identical, sections of the market.
Furthermore, often providers of services involving the provision of food and drinks produce their own goods, such as in pizzerias or pizza and pasta restaurants, where the provider of food and drinks also prepares the meals (pizza, pasta, etc.). It is not therefore uncommon for producers of the opponent’s goods for which reputation has been proven to have their own establishments where these goods are offered for consumption along with drinks (beverages) and other meals. The opponent’s reputed goods and products such as pizza are very often offered by the same establishments. These include, for instance, pizza parlours, restaurants providing meals to take away or for delivery, and many others. It follows that a link between the signs is likely to be established in the mind of the consumer when seeing the contested sign used in relation to pizza parlours; pizza restaurant services; provision of food and drink in Class 43.
The contested information in relation to all the aforesaid services (pizza parlours; pizza restaurant services; provision of food and drink) in Class 43 encompasses providing information about the services in question when running a business providing food and drinks.
These services of provision of information could take the form, for instance, of giving information on the essentials of restaurant services or providing information from the restaurant about the services it offers, such as what type of food it serves, price lists, etc. Therefore, these information services could be offered by the same providers as the restaurant services (in most cases) or they could be provided by entities specialising in the area of restaurant consultancy.
It follows that the contested information in relation to all the aforesaid services (pizza parlours; pizza restaurant services; provision of food and drink) in Class 43 could be auxiliary services to the production of goods and the provision of restaurant services. Therefore, the producers/providers of the opponent’s goods for which reputation has been proven and of the contested services could be the same and the relevant publics could overlap.
Taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that when encountering the contested mark the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T-301/09, Citigate, EU:T:2012:473, § 96).
- Risk of injury
Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:
∙ it takes unfair advantage of the distinctive character or the repute of the earlier mark;
∙ it is detrimental to the repute of the earlier mark;
∙ it is detrimental to the distinctive character of the earlier mark.
Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).
It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.
The opponent claims the following:
As it has been demonstrated in this writ, the trademark PANZANI is very well-known in Europe and especially in France. In fact, it has been shown that it is one of the most bought brand in France, and the first one for the specific goods.
In this regard, it is very evident that the use of a similar trademark, such is the present application, which can even be confused with PANZANI, will ease the entrance in the market of the Applicant, by taking an advantage of all the efforts and investments of the opponent.[…]
Furthermore, the trademark applied for can be detrimental to the distinctive character of the opposing trademark PANZANI, as it would imply the registration of a new trademark which has reached the registration by seeming an abbreviation of the original trademark “PANZANI”.
This could imply that many other trademarks could now access to the register, and then blurry the distinctive effect of the trademark PANZANI.
In relation with the above, it also has to be noted that PANZANI cannot control the quality of the goods offered by the Applicant in the event that it can operate in the market with such a similar trademark and for such coincident goods.
Therefore, since there exists a likelihood of confusion in the market, the quality of the goods, as well as the image reflected by the trademark applied for can directly impair the image created by PANZANI during long years, at least for the consumers which will be confused by the similarity of the trademarks.
[…]
[T]he contested trademark PANZO is capable of taking an unfair advantage of the distinctive character and of the repute of the earlier trademarks PANZANI. This concept, as showed, encompass cases where there is clear exploitation and free-riding […] on the investment of the opponent in promoting and building-up goodwill for its mark or an attempt to trade upon its reputation.
The signs at issue are very similar and the products covered by the trademark at issue belong to the food sector. The applicant in this case will advert, promote and sale the products with the highly similar trademark PANZO. As showed in this writ, the earlier trademarks PANZANI are very well-known mark in France and enjoy reputation in the French food sector. Thus the relevant consumer in France can easily associate the food products PANZO, offered by the applicant, as coming from the same undertaking that food products PANZANI of this party.
In other words, the opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark and be detrimental to its distinctive character and repute.
Before examining the opponent’s claims, it is appropriate to recall that the opposition is directed against the following goods and services:
Class 29: Olive oils; meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; cheeses; milk and milk products; edible oils and fats; prepared salads; antipasto salads; vegetable salads.
Class 30: Pizza; fresh pizza; pizza sauce; pizza sauces; uncooked pizzas; chilled pizzas; prepared pizza meals; sauces for pizzas; preparations for making pizza bases; prepared meals in the form of pizzas; sauces; sauces for pasta; sauces [condiments]; prepared pasta; sauces [condiments]; salad dressings; pasta salads; rice salads.
Class 43: Pizza parlours; pizza restaurant services; provision of food and drink; information in relation to all the aforesaid services.
As seen above, the earlier trade mark was found to have a reputation for:
Class 30: Pasta in all forms.
Unfair advantage (free-riding)
Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40).
As has been seen above, the opponent bases its claim, in part, on the allegation that the contested sign is capable of taking unfair advantage of the distinctive character and of the repute of the earlier trade mark, because of the similarity between the signs, the sector of the market concerned (the food sector) and the reputation (‘the most bought brand in France’) that the earlier sign enjoys. It is also stated that the relevant consumer could associate (and even confuse) the products originating from the applicant with those provided under the reputed mark. It is stated that the applicant’s entrance on the market would be facilitated by taking advantage of the opponent’s efforts and investments.
The concept of taking unfair advantage does not necessarily imply a deliberate intention to exploit the goodwill attached to someone else’s trade mark. In several cases, the General Court has held that the concept of taking unfair advantage ‘concerns the risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods covered by the mark applied for, with the result that the marketing of those goods is made easier by that association with the earlier mark with a reputation’ (19/06/2008, T-93/06, Mineral Spa, EU:T:2008:215, § 40; 22/03/2007, T-215/03, VIPS, EU:T:2007:93, § 40).
In the present case, it is likely that the use of the applicant’s sign with any of the contested goods and services would take unfair advantage of the earlier reputed mark in the sense recognised by the General Court in the preceding paragraph. In view of the reputation of the earlier mark, it seems inevitable that the image of the mark and the characteristics that it projects (e.g. a long-standing presence on the market and a high degree of brand awareness) will be transferred to the applicant’s goods and services if they are marketed under the contested sign.
Considering the coinciding sequence of letters in the signs, the inherent distinctiveness of the sole element of the earlier mark and the earlier mark’s recognition on the market, as well as the food provision and production sector that the goods of the reputed mark and the goods and services of the contested sign are placed in, it is considered that the contested sign would receive an unfair ‘boost’. This would come as a result of the contested sign being linked with the opponent’s reputed mark in the minds of consumers in France, because the marketing of the applicant’s goods and services would be made easier, as its mark contains a sequence of letters that will be linked to the earlier mark by the relevant public in France. It is due to the opponent’s efforts in France, not those of the applicant, that the contested sign would already start with an immediate degree of recognition. Overall, the contested sign’s association with the opponent’s earlier well-known sign in France makes the contested sign easier for the relevant French consumer to remember and recognise, and so the contested sign would exploit the attractive powers or distinctiveness of the earlier mark. The contested sign will thus benefit from the repute of the earlier mark.
On the basis of the above, the Opposition Division concludes that the contested sign is likely to take unfair advantage of the distinctive character or the repute of the earlier trade mark.
The opponent also argues that use of the contested trade mark would be detrimental to the repute and the distinctive character of the earlier trade mark.
As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark. It follows that there is no need to examine whether other types also apply.
- Conclusion
Considering all the above, the opposition is well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must be rejected for all the contested goods and services.
Given that the opposition is entirely successful under Article 8(5) EUTMR it is not necessary to examine the remaining grounds and earlier rights on which the opposition was based or the opponent’s claims under Article 8(5) EUTMR in relation to the remaining registered goods covered by the earlier mark compared above.
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 applicant 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
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Loreto URRACA LUQUE |
Irina SOTIROVA |
Erkki MÜNTER |
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.