OPPOSITION No B 2 699 679

Barbero Davide S.r.l., Via Brofferio, 84, 14100 Asti, Italy (opponent), represented by Nicola Novaro, Via Marconi, 14, 18013 Diano Castello (Imperia), Italy (professional representative)

a g a i n s t

Closed Joint-Stock Company Fabrika Russkiy shokolad, ul. Vereyskaya, d. 29, str. 143, Moscow 121357, Russian Federation (holder), represented by Foral Patent Law Offices, Kaleju 14-7, Riga, 1050, Latvia (professional representative).

On 19/10/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 699 679 is upheld for all the contested goods.

2.        International registration No 1 294 661 is entirely refused protection in respect of the European Union.

3.        The holder bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of international registration designating the European Union No 1 294 661, ‘TORRONFETTA’. The opposition is based on European Union trade mark registration No 8 239 121, ‘’.The opponent invoked Article 8(1)(b) EUTMR.

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

PROOF OF USE

In accordance with Article 47(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.

For international registrations designating the European Union, the ‘date of filing’ or, where applicable, the ‘date of priority’ of the contested mark within the meaning of Article 47(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 the date of registration, the date of subsequent designation of the European Union or the date of priority of the contested international registration, as applicable. 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, European Union trade mark No 8 239 121, ‘’.

The relevant date for the contested international registration (date of international registration) is 09/02/2016. 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 09/02/2011 to 08/02/2016 inclusive.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

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

Class 30:        Pastry and confectionery.

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), 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 or services in respect of which it is registered and on which the opposition is based.

On 15/12/2016, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 20/02/2017 to submit evidence of use of the earlier trade mark. On 17/02/2017, 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, in particular, the following:

• a set of more than 4 000 invoices, bearing the opponent’s name and address and covering the period 2011-2016, to customers in, inter alia, Italy, Germany, France and the United Kingdom, containing references to the sign ‘Torronfette’, for ‘crumbly, sliced torrone’;

• a list of turnover figures for the product ‘Torronfette’, deriving from the opponent, for the years 2011-2016 by country, showing sales figures mainly in Italy, but also in, inter alia, Germany, France and the United Kingdom;

• catalogues for 2011-2016, in Italian but with some pages in English, showing the mark ‘Torronfette’ on confectionery products, such as , , ;

• some press cuttings, including, inter alia, one from the German magazine Slow Food, from December 2014, in German, but referring to the word sign ‘Torronfette’ (p. 31), and one from The Telegraph magazine, from December 2009, in English, referring to torronfette as slices of nougat (p. 71);

• samples of products and packaging, showing the sign for confectionery as, for example, ;

• some extracts from the internet mainly showing the products as above;

• price lists, ranging from 2011 to 2016, for the opponent’s products, including the range of ‘Torronfette’ confectionery;

• a list of events and exhibitions in which the opponent participated in, inter alia, Germany, Italy and France;

• some photos from a food exhibition, showing the opponent’s confectionery products displayed and bearing the figurative sign ‘Torronfette’. .

Place of use

The invoices, catalogues, magazines and list of events and exhibitions in which the opponent took part shows that the place of use is mainly Italy but also, inter alia, Germany, United Kingdom and France. This can be interfered from the languages of the documents (Italian, English and German), the currency mentioned (euros) and the addresses in these countries. Therefore, the evidence relates to the relevant territory.

Time of use

Most of the evidence is dated within the relevant period.

Extent of use

The documents filed, namely the invoices and the turnover figures, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

Nature of use

In the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

In the present case, even though not all the documents show the mark as registered, the evidence of use submitted by the opponent contains sufficient indications concerning the nature of use of earlier European Union trade mark No 8 239 121 as registered, ‘’.

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 47(2) EUTMR, if the earlier trade mark has been used in relation to only some 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 those goods or services.

In the present case, the evidence shows genuine use of the trade mark for the following goods:

Class 30:        Confectionery.

Therefore, the Opposition Division will only consider the abovementioned goods 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 30:        Confectionery.

The contested goods are the following:

Class 30:        Waffles; confectionery for decorating Christmas trees; cakes; pastries; almond confectionery; peanut confectionery; sweetmeats [candy]; caramels [candy]; liquorice [confectionery]; peppermint sweets; crackers; pastilles [confectionery]; petit-beurre biscuits; biscuits; fondants [confectionery]; pralines; gingerbread; petits fours [cakes]; halvah; chocolate.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

The contested confectionery for decorating Christmas trees; almond confectionery; peanut confectionery; sweetmeats [candy]; caramels [candy]; liquorice [confectionery]; peppermint sweets; pastilles [confectionery]; fondants [confectionery]; pralines; chocolate are included in the broad category of the opponent’s confectionery. Therefore, they are identical.

The contested waffles; cakes; pastries; crackers; petit-beurre biscuits; biscuits; gingerbread; petits fours [cakes]; halvah are similar to the opponent’s confectionery, as they have a similar purpose, target the same users and may be in competition with one another.

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 are directed at the public at large. The degree of attention is average.

3. The signs

	TORRONFETTA
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 common element ‘TORRONFETT*’ is not meaningful in certain territories, for example in those countries where Italian or Spanish is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Swedish- and Danish-speaking parts of the public.

The earlier mark is a figurative mark, consisting of the verbal element ‘TORRONFETTE’ in sentence case, handwritten letters. To the right of these letters is a thin vertical line. The verbal element ‘TORRONFETTE’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive.

The verbal element ‘TORRONFETTE’ in the earlier sign is the dominant element as it is the most eye-catching.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

The element ‘TORRONFETTA’ of the contested mark has no meaning for the relevant public and is, 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.

Visually, the signs coincide in 10 out of a total of 11 letters in both marks, ‘TORRONFETT*’, and are distinctive for the relevant public. They differ only in their last letters’, ‘E’ in the earlier mark and ‘A’ in the contested sign, and in the figurative depiction and the thin vertical line of the earlier mark.

Therefore, the signs are visually highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘TORRONFETT*’, present identically in both signs. This coinciding component is distinctive. The pronunciation differs in the sound of the last letters, ‘E’ of the earlier sign and ‘A’ of the contested sign, which have no counterparts in the opposite signs.

Therefore, the signs are aurally highly similar.

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 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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

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/services covered are from the same or economically linked undertakings.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods and services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The goods under comparison are identical or similar. The degree of attention is average.

The signs under comparison are visually and aurally highly similar, to the extent that they have in common 10 out of 11 letters in both marks. They differ only in the last letter and in the depiction of the earlier mark.

Considering all the above, there is a likelihood of confusion on the part of the Swedish- and Danish-speaking parts of the public. 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.

In its observations, the holder argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include ‘TORRON’ and ‘FETTE’. In support of its argument the holder refers to some European Union trade mark registrations. 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 ‘TORRON’ and ‘FETTE’. Under these circumstances, the holder’s claims must be set aside.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 8 239 121. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

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

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Claudia ATTINÀ

Lena FRANKENBERG GLANTZ

Plamen IVANOV

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been 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 Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.