OPPOSITION No B 2 524 711

Cemal Karpuz, von-Sturmfeder-Str. 52 a, 67067 Ludwigshafen, Germany (opponent), represented by Anna-Dorothea Polzer, Friedrichsplatz 1, 68165 Mannheim, Germany (professional representative)

a g a i n s t

WBZ Nord GmbH, Bankstraße 1-28, 20097 Hamburg, Germany (applicant), represented by Rödl Stoll Schulte Rechtsanwälte Partnerschaftsgesellschaft mbB, Kehrwieder 8, 20457 Hamburg, Germany (professional representative).

On 27/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 524 711 is partially upheld, namely for the following contested goods:

Class 29: Milk and milk products; condensed milk and coffee cream, including with added flavourings; buttermilk and sour milk, including with added probiotic cultures; buttermilk, sour milk and other mixed milk products; kefir [milk beverage]; desserts, mainly consisting of milk products, including sour cream; yoghurt, including with added flavourings and/or fruit and including the aforesaid products with probiotic cultures; cream and cream products, including made with ultrapasteurized milk; quark and quark preparations with added flavourings, spices, fruits, herbs and/or vegetables, and other foodstuffs and dietary supplements; cheese, hard cheese, sliced cheese, soft cheese, cream cheese, cottage cheese (grainy cream cheese), processed curd cheese and preparations made therefrom; butter, clarified butter, butter preparations; beverages based on milk, buttermilk and yoghurt, including with added fruit; mixed milk beverages (milk predominating), including with added fruit; cheese and milk preparations in snack form.

Class 30: Ices.

2.        European Union trade mark application No 13 628 581 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 628 581. The opposition is based on European Union trade mark registration No 5 414 561. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority 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 will be rejected.

The applicant 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 contested application was published on 09/02/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 09/02/2010 to 08/02/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 29:        Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit puree; eggs, milk and milk products; edible oils and fats.

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

Class 32:        Mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

According to Rule 22(3) EUTMIR, the evidence of use must 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 25/02/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 25/04/2016, further extended until 25/06/2016, to submit evidence of use of the earlier trade mark. On 16/06/2016, within the time limit, the opponent submitted evidence of use.

The evidence provided by the opponent is the following:

A sworn declaration in German signed by the opponent – Mr Cemal Karpuz – dated 09/06/2016, accompanied by its translation in English. The declaration states the following:

that the opponent ordered through its company Can-Türk GmbH for products branded with the trade mark ‘Sütat’ labels and artwork to be produced by a third party – Artworks/Mr Wolfram Kips – and that these purchases are proved through the third party invoices accompanying its declaration and enclosed under Exhibit 1:

o Exhibit 1 – six invoices in German, all dated 23/12/2008 and all issued to the opponent by the third party – Artworks/Mr Wolfram Kips, one of them for various services, including creation of a label and five of them for preparation of labels with the mark ‘Sütat’ for cheese, yoghurt and ayran.

• that the products were designed according to the above-mentioned order as shown in Exhibit 2:

o Exhibit 2 –photos of some packaging for ayran and yoghurt with the trade mark and .

• that the products marked ‘Sütat’ were offered for sale as shown in Exhibit 3:

o Exhibit 3 – 3 photos (undated) – one of shelves in a store (possibly, in Germany according to the language appearing) and two of a fridge itself and a fridge in a food and drink establishment showing ayran branded .

• that the opponent´s letterheads carry the trade mark ‘Sütat’ – Exhibits 4 and 5 opponent´s letterheads, undated;

• that some products, namely yoghurt and ayran branded ‘Sütat’ were sold in the years 2011 and 2012 through the opponent´s company Nefisso GmbH as evidenced by Exhibits 6 and 7, and accompanied by some invoices – Exhibit 8:

o Exhibits 6 and 7 – sales figures prepared by the opponent with some names of its customers with sales figures for ayran (for EUR 4 424) and yoghurt (for EUR 5 010, 70) marked ‘Sütat’ from 01/01/2011 until 31/12/2012;

o Exhibit 8 – eight invoices in German issued by Nefisso GmbH to different companies (appearing in between the clients indicated in the sales figures above mentioned) all placed in Germany (which can be identified by the addresses and the language of the invoices) and distributed through the period in between 11/10/2011 and 05/07/2012.

Furthermore, the opponent sent certified excerpts from the German Commercial Registry showing that the opponent is the General Manager of the companies Can Türk GmbH and Nefisso GmbH and certified lists of the shareholders of both companies showing that the opponent is their sole or majority shareholder, respectively.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use. In addition, the use of the mark need not be quantitatively significant for it to be deemed genuine.

The majority of the documents – photos, packaging and invoices – show that the place of use is Germany. This can be inferred from the language of the documents that is German, the currency mentioned – euro – and the addresses of the clients present on the invoices that are all in Germany. The above conclusion is supported by the certified excerpts from the German Commercial Registry showing that the opponent is the General Manager of the companies Can Türk GmbH and Nefisso GmbH clearly established in Germany.

As stated above, the territorial scope of the use is only one of several factors to be assessed in the determination of whether the use is genuine or not. Therefore, the Opposition Division considers that the evidence relates to the relevant territory of the European Union.

Most of the evidence which is dated is within the relevant period.

The documents filed provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use of the earlier mark.

Although the evidence indicates a low commercial volume and especially, not a lengthy duration of use, it shows a rather frequent use of the EUTM in a certain Member State, namely, Germany within a certain duration of time 2011-2012. The invoices issued to the opponent by the third party – Artworks/Mr Wolfram Kips in the year 2008 show some preparation activities, namely manufacturing of some labelling to initiate the sale of some of the opponent´s products on the market and the invoices issued by the opponent to various third parties – restaurants and shops – confirm that the products were actually sold in the years 2011-2012. This is as well accompanied and supported by the opponent´s sales figures for the same period.

Therefore, the Opposition Division considers that, in view of the market situation in the particular industry or trade concerned, it can be deduced from the material submitted that the opponent has seriously tried to acquire a commercial position in the relevant market. All in all, the opponent has provided sufficient indications concerning the extent of the use of the earlier mark.

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following shall also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the signs shown on the packaging are and . The signs as represented are acceptable to constitute a satisfactory use of the earlier word mark ‘Sütat’, since the specific manner the sign is represented (with some figurative elements added, such as colour and background) does not alter the distinctive character of the earlier mark in the form it was registered. Furthermore, the trade mark ‘Sütat’ appears as registered within the invoices provided.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory of the European Union.

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 will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

In the present case the evidence shows genuine use of the trade mark for the goods ayran and yoghurt in Class 29 only. Solely on one of the documents, namely one of the invoices issued to the opponent by Artworks/Mr Wolfram Kips to pay for the preparation of some labels with the mark ‘Sütat’ the products cheese appears, however the mere mentioning of this good in one single piece of evidence does not prove that cheese was ever manufactured and sold by the opponent under the earlier trade mark. For the remaining goods in Classes 29, 30 and 32, no evidence whatsoever was filed to show use of the earlier mark with these goods.

Therefore, the Opposition Division will only consider the goods ayran and yoghurt in Class 29 in its further examination of the opposition.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods

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

Class 29: Ayran, yoghurt.

The contested goods are the following:

Class 29: Milk and milk products; condensed milk and coffee cream, including with added flavourings; buttermilk and sour milk, including with added probiotic cultures; buttermilk, sour milk and other mixed milk products; kefir [milk beverage]; desserts, mainly consisting of milk products, including sour cream; yoghurt, including with added flavourings and/or fruit and including the aforesaid products with probiotic cultures; cream and cream products, including made with ultrapasteurized milk; quark and quark preparations with added flavourings, spices, fruits, herbs and/or vegetables, and other foodstuffs and dietary supplements; cheese, hard cheese, sliced cheese, soft cheese, cream cheese, cottage cheese (grainy cream cheese), processed curd cheese and preparations made therefrom; butter, clarified butter, edible fats; butter preparations; beverages based on milk, buttermilk and yoghurt, including with added fruit; mixed milk beverages (milk predominating), including with added fruit; extracts or powders, mainly made of milk, for making mixed milk beverages; milk-based mixtures with added vegetable, animal or milk fats for use in foodstuffs; protein concentrates for food; dried milk products for food, in particular powdered full-cream milk, skimmed milk and buttermilk; whey powder for food; cheese and milk preparations in snack form.

Class 30: Coffee, tea, cocoa and chocolate-based drinks with added milk, and extracts or powders for the making thereof; muesli preparations, mainly consisting of milk, sour cream, buttermilk, sour milk, yoghurt, kefir, quark, prepared fruits and/or cereals; puddings; ices, powders for ice-cream, syrups for making ices by freezing, all with added fruit; rice puddings, rice pudding with fruit, semolina pudding; fruit sauces; prepared meals, mainly containing at least one of the aforesaid goods.

Class 32: Non-alcoholic beverages; whey beverages.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The terms ‘in particular’ and ‘including’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 29

The contested milk products include, as broader categories the opponent’s yoghurt; ayran. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested yoghurt, including with added flavourings and/or fruit and including the aforesaid products with probiotic cultures is identically contained in the opponent’s list under yoghurt.

The contested desserts, mainly consisting of milk products, including sour cream overlap with the opponent’s yoghurt. Therefore, they are considered identical to the opponent’s goods.

The contested milk is similar to the opponent’s yoghurt as they have the same nature. They can coincide in producer, end user and distribution channels.

The contested beverages based on milk, buttermilk and yoghurt, including with added fruit; mixed milk beverages (milk predominating), including with added fruit; condensed milk and coffee cream, including with added flavourings; buttermilk and sour milk, including with added probiotic cultures; buttermilk, sour milk and other mixed milk products; kefir [milk beverage]; cream and cream products, including made with ultrapasteurized milk; quark and quark preparations with added flavourings, spices, fruits, herbs and/or vegetables, and other foodstuffs and dietary supplements; cheese, hard cheese, sliced cheese, soft cheese, cream cheese, cottage cheese (grainy cream cheese), processed curd cheese and preparations made therefrom; butter, clarified butter, butter preparations; cheese and milk preparations in snack form are all dairy products and to this extent they are similar to the opponent’s yoghurt which is also a milk product. Furthermore, producers and distribution channels usually coincide.

The contested dried milk products for food, in particular powdered full-cream milk, skimmed milk and buttermilk; extracts or powders, mainly made of milk, for making mixed milk beverages; milk-based mixtures with added vegetable, animal or milk fats for use in foodstuffs are dissimilar to the goods of the earlier mark. Although these goods either can contain milk or are milk products, this is not sufficient to find them similar to the opponent´s yoghurt and ayran of the earlier mark. The applicant´s goods are commonly not produced by the same undertaking as the opponent´s goods. Milk powder is frequently used for nutrition of babies (in manufacture of infant formula) or as an ingredient in confectionery and in recipes for baked goods. Thus, the purpose and the method of use of the compared goods are distinct. They are not in competition, nor are the goods complementary. Furthermore, milk powder is not placed on the same or even near-by shelves or stands to those where the opponent´s goods are found.

The contested edible fats; protein concentrates for food; whey powder for food are dissimilar to any of the opponent’s goods. Although the goods might target the same end users, their nature and purpose is different. Moreover, the goods in comparison are usually produced by different undertakings and are commercialised through different distribution channels. Furthermore, they are neither complementary nor in competition to each other.

Contested goods in Classes 30 and 32

The contested ices in Class 30 are a smooth, sweet and cold food prepared from a mixture of milk products and the opponent´s yoghurt is a fermented milk product produced by bacterial fermentation of milk. These goods coincide in their nature (their basic ingredient being milk or cream), purpose (can be served as dessert), manufacturer (milk products producers), vending points and end user. Moreover, the goods in comparison are in competition. Therefore, these goods are similar to a high degree.

The rest of the contested goods in Class 30 and the contested goods in Class 32 are considered dissimilar to the opponent’s yoghurt and ayran since they satisfy different needs of the relevant public, are manufactured and are commercialised by different entities. Their nature is completely distinct as well; the mere fact that they are all food items or non-alcoholic beverages is not sufficient to conclude similarity. The same is valid for the fact that yoghurt may be used in some way in conjunction with, or as an ingredient of, some of the contested goods, e.g. yoghurt used in muesli preparations, is not in itself sufficient to find them similar since consumers will not think that the same entity is responsible for manufacturing those goods.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or similar to different degrees are directed at the public at large. The degree of attention is considered to be average.

3. The signs

Sütat
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The elements ‘Sütat’ and ‘sütüm’ are meaningless in certain territories and are therefore distinctive. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-Turkish-speaking part of the public.

Visually and aurally, the signs coincide in the letters ‘SÜT’ placed at the beginning of the signs and in their corresponding sounds. They differ in the letters ‘AT’ at the end of the earlier mark and in the letters ‘ÜM’ at the end of the contested sign and in their sound. However, this difference is slightly mitigated by the fact that the words sütat and sütüm have the same amount of letters (five) and syllables (two) which gives them a similar appearance, rhyme and rhythm. Visually, they also differ in the oval background and in the stylization of the letters of the contested sign. Nevertheless, the oval background is of a purely decorative nature, and therefore less distinctive than the meaningless verbal element.

Moreover, 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.

Consequently, the signs are visually and aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for the 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.

4. Distinctiveness of the earlier mark

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

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, §16).

According to the same line of case-law, 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). Moreover, for the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind.

In the present case, the signs coincide in three out of five letters placed at the beginning of the signs, namely ‘SÜT’. They only differ in their last letters/syllables and in the figurative elements which distinctive role within the contested sign is limited.  

Account is also taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Moreover, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods covered are from the same or economically linked undertakings.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the non-Turkish-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to several degrees to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will 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

Benoit VLEMINCQ

Sandra IBAÑEZ

Adriana VAN ROODEN

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.