Hajdú Mills | Decision 2660861

Date Published: Sep 25, 2017

OPPOSITION No B 2 660 861

Hajdú Gabona Zrt., Széchenyi u. 13., 4025 Debrecen, Hungary (opponent), represented by Gödölle, Kékes, Mészáros & Szabó Szabadalmi és Védjegy Iroda, Keleti Károly u. 13/b, 1024 Budapest, Hungary (professional representative)

a g a i n s t

Avangard Limited, 20 Preston Road, London, City of London E11 1NN, United Kingdom (applicant), represented by Intelect SRL, Bd. Dacia 48, Bl. D-10, ap. 3, 410346 Oradea, Bihor, Romania (professional representative).

On 14/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 660 861 is partially upheld, namely for the following contested goods:

Class 30:        Rice; Tapioca; Sago; Flour; Preparations made from cereals; Bread; Confectionery; Yeast; Baking powder.

2.        European Union trade mark application No 14 800 353 is rejected for all the above goods. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 800 353, namely against all the goods in Class 30. The opposition is based on, inter alia, Hungarian trade mark registration No 218 863. The opponent invoked Article 8(1)(b) EUTMR and, in relation to Hungarian trade mark registration No 176 859, also Article 8(5) EUTMR.

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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Hungarian trade mark registration No 218 863.

1. The goods

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

Class 30:        Flour-milling products; flour and other preparations made from cereals; pastry flour; plain flour; wheat flour; semolina; groats for human food; barley meal; oatmeal; maize flour; farinaceous foods.

The contested goods are the following:

Class 30:        Rice; Edible ices; Sugar, honey, treacle; Salt; Mustard; Spices; Ice; Coffee; Tea; Cocoa; Artificial coffee; Tapioca; Sago; Flour; Preparations made from cereals; Bread; Confectionery; Yeast; Baking powder; Vinegar; Sauces; Condiments.

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 30

Flour and (other) preparations made from cereals are identically contained in both lists of goods.

The contested bread is included in the broad category of the opponent’s preparations made from cereals [other than flour]. Therefore, they are identical.

The contested yeast and baking powder are similar to the opponent’s flour. These goods often have the same producers, are found in the same sections in shops and are intended for the same public.

The contested sago and tapioca is similar to the opponent’s flour as these goods coincide in producer, distribution channels and method of use. Furthermore, they are in competition.

The contested confectionery is similar to the opponent’s preparations made from cereals [other than flour] (the latter including, for example, sweet cereal bars), since they have the same purpose, can coincide in producer, end user and distribution channels. Furthermore, they are in competition.

The contested rice is similar to a low degree to the opponent’s preparations made from cereals as they can coincide in end user, distribution channels and method of use.

The remaining contested goods, namely edible ices; sugar, honey, treacle; salt; mustard; spices; ice; coffee; tea; cocoa; artificial coffee; vinegar; sauces and condiments are dissimilar to all the opponent’s goods. The opponent’s goods are various types of flour, flour milling products, preparations made of cereals and farinaceous foods while the contested goods are condiments (sugar, honey, treacle; salt; mustard; spices; vinegar; sauces; condiments), coffee; tea; cocoa; artificial coffee and ices (edible or for cooling). The fact that goods in comparison are all intended for human consumption is, in itself, not sufficient for finding similarity. Their producers are different, they are offered in different parts of supermarkets and they are not in competition. The fact that these goods are used as ingredients, in combination with each other, is neither an indication of complementarity (which is defined as the fact the goods are indispensable or essential to each other) not more generally a factor of similarity.

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 various degrees) are directed at the public at large. Having in mind that the relevant goods are cheap and every day consumer products, the degree of attention is considered to be no more than average.

3. The signs

	Hajdú Mills
Earlier trade mark	Contested sign

The relevant territory is Hungary.

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 earlier figurative mark comprises a figurative element representing a man on a horse with a whip extending upwards in a long three-colour twisted line in the colours of the Hungarian flag, the verbal element ‘Hajdú’ and an abstract horizontal line with curves. The word ‘Hajdú’ in Hungarian may be associated with several possible meanings (for example, it may be seen as a reference to a geographical region or towns with names beginning with ‘Hajdú’), however, considering that it appears together with the representation of a rider, it will be perceived as referring to ‘hajdú(k)’, which is a word used to refer to a (cattle) drover and later a kind of irregular soldier. Apart from the horizontal line with curves (which is of a rather decorative nature and thus of limited distinctiveness) and the a long three-colour twisted line in the colours of the Hungarian flag (which will be seen as referring to the origin of the goods and will also be of limited distinctiveness), the rest of the elements are distinctive as they have no connection with the goods at issue. Neither element dominates over the other and all are clearly perceived, however, 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).

In the contested sign the word ‘Mills’ has no meaning and is distinctive to an average degree. In the absence of other concepts in the contested sign the element ‘Hajdú’ of the contested sign could have several interpretations, however the Opposition Division considers that a significant part of the public will perceive this word in the same way as in the earlier mark, namely as referring to ‘hajdú’ in the sense of a (cattle) drover/a kind of irregular soldier. In relation to the relevant goods, this element is distinctive as it has no apparent connection. Consequently, the Opposition Division finds it appropriate to first consider this very likely scenario and will resort to other interpretations, if necessary, at the later stage.

Visually, the signs coincide in the distinctive verbal element ‘Hajdú’. It is the only verbal element in the earlier mark and plays and independent distinctive role in the contested one. However, as the signs differ in their remaining elements, namely the figurative elements (including the distinctive ones) and the colours and the additional distinctive verbal element of the contested mark the signs are similar to a no more than average degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‘Hajdú’ which is the only verbal element of the earlier mark and the first independent element of the contested sign. As the contested sign will have the additional sound of the distinctive word ‘Mills’, the signs are similar to at least an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be associated with the distinctive concept of ‘hajdú(k)’ reinforced by the figurative device of a rider and considering the presence and the weight of the additional elements, the signs are conceptually highly similar.

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, despite the presence of less distinctive element in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or 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).

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.

In the present case, the conflicting sign were found to be similar in all three aspects of the comparison on account of the common distinctive element ‘Hajdú’. Although both signs comprise further distinctive elements, ‘Hajdú’ is the only verbal element in the earlier mark and the first element in the contested sign. Therefore, the Opposition Division is of the view that the differences between the signs are not sufficient to safely rule out likelihood of confusion for the relevant public, which, furthermore, will not display a heightened degree of attention.

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 that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

The applicant argues that its EUTM is benefiting of a good reputation on the European marked and that has obtained a Community design for a similarly-marked packaging design and filed various pieces of evidence to substantiate this claim.

The right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion at least on the part of the relevant public that would perceive in both marks the same concept of ‘hajdú’. Although it cannot be excluded that the contested sign’s element ‘Hajdú’ could be associated by a part of the relevant public with alternative meanings in Hungarian, there is no need to establish that all actual or potential consumers of the relevant goods are likely to be confused. If a significant part of the relevant public of the goods at issue may be confused as to the origin of the goods (as is the case here), this is sufficient. Therefore, the opposition is partly well founded on the basis of the opponent’s Hungarian 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 (including to a low degree) 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.

The opponent has also based its opposition on the following earlier trade marks:

• Hungarian trade mark registration No 176 859  for flours in Class 30;
• Hungarian trade mark registration No 177 088 for flours and other cereals in Class 30;
• Hungarian trade mark registration No 218 969  for flour-milling products; flour and other preparations made from cereals; pastry flour; plain flour; wheat flour; semolina; groats for human food; barley meal; oatmeal; maize flour; farinaceous foods in Class 30;

• Hungarian trade mark registration No 220 240 ‘HAJDÚ GABONA’ (word mark) for flour-milling products; flour and other preparations made from cereals; pastry flour; plain flour; wheat flour; semolina; groats for human food; barley meal; oatmeal; maize flour; farinaceous foods in Class 30;

• Three European Union trade mark applications, namely No 14 792 253 , No 14 836 712 , No 14 917 645 ‘HAJDÚ GABONA’ (word mark), for all three the opposition being based on flour-milling products; flour and preparations made from cereals; pastry flour; plain flour; wheat flour; semolina; groats for human food; barley meal; oatmeal; maize flour; farinaceous foods in Class 30.

Since these marks cover the same or a narrower scope of goods as the earlier mark that was already compared, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

REPUTATION – ARTICLE 8(5) EUTMR

Within the opposition period the opponent specified that it wished to invoke Article 8(5) EUTMR in relation to its Hungarian trade mark registration No 176 859 for the figurative mark .

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 above mentioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

1. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in Hungary.

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 16/11/2015. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Hungary 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:        Flours.

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 30/06/2016, 05/07/2016 and 06/07/2016 the opponent submitted the following evidence:

• Samples of paper bags of 1 kg, 2 kg, 5 kg with the opponent’s mark (12 bags in total), with the following (or very similar) depiction .

• Annex 6: Statement of Dr. Zoltán Lakatos, President-CEO and majority shareholder of the opponent dated 11/05/2016 (translated into English) indicating that the company has been using the ‘horse-herder’ graphics with the HAJDÚ mark since 1992 and has a trade mark protection in Hungary since 2002.

• Annexes 7-15: Copies of correspondence between Flexo 2000 Kft. and Mondi Bags Hungaria Kft. and the opponent in relation to the design of the packaging, including the attachments of packaging designs; the correspondence is dated 17/01/2006, 07/12/2007, 30/01/2008, 12/11/2008, 14/08/2009, 30/10/2009, 02/03/2010, 09/02/2011 and 03/02/2012.

• Annexes 16-17: Letters dated 09/03/2006 and 06/02/2015 sent by Flexo 2000 Kft. in relation to prices of bags of various sizes.

• Annexes 18-26: eight invoices issued between 07/07/2009 and 27/01/2015 by Flexo 2000 Kft. and Mondi Bags Hungaria Kft. to the opponent for paper bags of various sizes, in total for more than 2 500 000 bags.  

• Annex 27: a table showing data of the total quantity of flour sold by the opponent in the years 2000 to 2015 (in tons). According to the table, the sold quantities vary between approx. 38 000 tons (in 2005) and approx. 84 000 tons (in 2011). The table contains no source indication or date.

• Annex 28: a table representing the same data as indicated in Annex 27, but for domestic flour sales, i.e. sales in Hungary; the table contains no source indication or date. According to the opponent, the difference is the export sale, mainly in Romania.

• Annex 29: a document issued by the Hungarian Grain and Feed Association, dated 19/05/2016, providing data on annual output of the Hungarian milling industry in tons between 2004 and 2014 and the respective output of the opponent. According to the document, the share of the opponent of the nation-wide output varies, e.g. 3,97% (in 2005) and 9,14% (in 2011 and 2012). It is, furthermore, indicated that the opponent’s output (in tons) exceeds 100 000 tons in each of the years in the period 2011-2015. The source of the nation-wide figures is the Grain Association whereas the source of the figures of the opponent is data from the company’s own files.  

• Annexes 30-46: approx. 90 invoices for domestic sale issued by the opponent in the years 2001 to 2015 (several invoices for each year) to more than 15 different companies for plain flour for more than 45 000 000 HUF (which is approx. 145 000 EUR as per the current exchange rate), semolina and wheat plain flour (for about 13 000 000 HUF, which is approx. 40 000 EUR as per the current exchange rate).

• Annex 47: nine excerpts from product brochures from the years 2010, 2011 and 2012 where flour bearing the earlier mark is listed.

• Annex 48: Copy of a ‘Product Quality Award’ from a Farmer Fair in Debrecen for the year 2004 for the opponent’s ‘Hajdú flour and milling product line’.

• Annex 49: Copy of a certificate dated 22/11/2005, according to which the Hajdú-Bihar County Association for Quality Product awards the title ‘Quality Product of Hajdú-Bihar County’ to the ‘Hajdú flour and milling line of Hajdúsági Gabonaipari Rt’.

• Annex 50: Extract from the record of the Heritage Centre of Hajdú-Bihar County showing that the opponent’s flour line marketed with the ‘horse-herder’ is included in the records.

• Annex 51: Copy of a certificate of Recognition certifying that the opponent has made an excellent presentation of its products at the 15th Farmer-Expo in Debrecen in 2006.

• Annex 52: Copy of a document awarding the opponent the ‘Patron of the Debrecen University Agricultural Sciences Faculty’ prize in June 2007.

• Annex 53: Copy of a certificate certifying that the Hungarian Red cross has awarded the opponent the title of Sponsor of the Year in 2013.

• Annex 54: Copy of a Memorial Certificate to commemorate the 20th Wheat Conference organised jointly by the Debrecen University and the opponent in 2013.

• Annex 55: Copy of a Memorial Certificate given to the opponent for the contribution to organising the 14th Hand Reaping Competition in 2013.

• Annex 56: Copy of a document issued in 2014 by the Presidential Board of the Hungarian Charity Service of the Order of Malta to express its appreciation and gratitude to the opponent for its support.

• Annex 57: Copy of a Badminton Tournament Notice for the 16th Hajdú Gabona Cup sponsored by the opponent.

• Annex 58: Copy of the opponent’s company records showing that the opponent’s company was founded in 1991 and that the company’s return from sales in 2015 was approximately 7,950 million HUF.

On the basis of the above the Opposition Division concludes that the earlier trade mark has a certain reputation in Hungary for flour. 

The abovementioned evidence indicates that the earlier trade mark has been used for a substantial period of time. The sales figures suggest that the trade mark has a consolidated position in the market. Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence indicates that the earlier trade mark enjoys a certain degree of recognition among the relevant public, which leads to the conclusion that the earlier trade mark enjoys some degree of reputation.

However, from the evidence it cannot be concluded that the earlier mark has a particularly strong reputation. The advertisement materials submitted by the opponent (Annex 47) do not reflect knowledge of the mark by a significant part of the general consumers in Hungary and neither do the various certificates and documents in Annexes 48 – 57. Furthermore, although indeed the document issued by the Hungarian Grain and Feed Association (Annex 29) shows that the opponent has a market share between 4% and 9% of the nation-wide output, the Opposition Division notes that the data in relation to the opponent´s output is based on data from the opponent´s own files and that there are certain discrepancies between the information with regard to the output in Annex 29 and the information submitted by the opponent in Annexes 27-28. Moreover, while it is true that according to Annex 58 (the extract from the company records) the opponent´s turnover for 2015 is impressive, there is no evidence on file that would allow the conclusion that this turnover was achieved only with regard to the relevant goods, namely flours. Finally, it should be noted that the opponent has not submitted any evidence, such as opinion polls, market research or declarations from professional associations indicating the proportion of the relevant public who, on account of the mark, identifies the goods as coming from the opponent.

Consequently, whether the degree of recognition is sufficient for Article 8(5) EUTMR to be applicable depends on other factors relevant under Article 8(5) EUTMR such as, for example, the degree of similarity between the signs, the inherent characteristics of the earlier trade mark, the type of goods and services in question, the relevant consumers, etc.

2. The signs

	Hajdú Mills
Earlier trade mark	Contested sign

The relevant territory is Hungary.

The earlier mark invoked under Article 8(5) EUTMR is almost identical to the earlier mark compared above under the grounds of Article 8(1)(b) EUTMR. The only difference between these two earlier marks lies in the additional verbal elements ‘FINOM LISZT’, which were not present in the earlier mark compared above under the grounds of Article 8(1)(b) EUTMR. The words ‘FINOM LISZT’ in Hungarian mean ‘plain flower’ which in relation to the goods invoked under Article 8(5) EUTMR, namely flours in Class 30, are directly descriptive of the kind of goods and are, therefore, non-distinctive. Consequently, these non-distinctive verbal elements have a very low impact, if any, on the overall impression of the earlier mark. Therefore, the considerations and analysis of the similarity of the signs undertaken under Article 8(1)(b) EUTMR are equally valid for Article 8(5) EUTMR. The Opposition Division is of the view that the conflicting marks are similar (to different degrees) in all three aspects of the comparison.  

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed to a certain degree and the signs are similar. 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, as set out in detail under the grounds of Article 8(1)(b) EUTMR above, the conflicting signs are similar on account of the coinciding (and distinctive, at least for a relevant part of the public) element ‘Hajdú’ to the extent that a likelihood of confusion cannot be safely excluded for identical or similar (even to a low degree) goods. Furthermore, the earlier mark as a whole is inherently distinctive for the goods for which a reputation has been found, namely flours. In addition, as already shown above, the earlier mark has been found to enjoy a certain degree of recognition in Hungary.

Another factor to consider when assessing whether there is a ‘link’ between the signs are the relevant goods.

At this point, the Opposition Division finds it useful to recall that the examination of the opposition continues with regard to the contested goods, for which the opposition was rejected under the ground of Article 8(1)(b) EUTMR, namely:

Class 30:        Edible ices; Sugar, honey, treacle; Salt; Mustard; Spices; Ice; Coffee; Tea; Cocoa; Artificial coffee; Vinegar; Sauces; Condiments.

When considering these contested goods it is the opinion of the Opposition Division that, while the relevant section of the public for the goods covered by the conflicting marks may overlap to some extent, they are sufficiently far removed from the opponent’s reputed goods, that the contested mark is unlikely to bring the earlier mark to the mind of the relevant public.

Admittedly, the opponent’s flours may be used together with some of the applicant’s goods (e.g. sugar or honey). Nevertheless, this does not automatically mean that there is a connection between them or that they belong to neighbouring markets where a brand extension of the opponent would seem naturally possible taking into account, in particular, that it was not established that the earlier mark enjoys a particularly strong reputation. Furthermore, the opponent was unable to provide any good reason or convincing arguments why the relevant public targeted by the contested sign would make a connection with the earlier mark in relation to remaining contested goods in Class 30.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them.

In addition and for the sake of completeness, the Opposition Division points out that the opponent did not file any evidence or at least put forward a coherent line of arguments, showing that the use of the contested mark would take unfair advantage or be detrimental to the repute or to the distinctiveness of the earlier mark, what such risk of injury would consist of and how it would occur, which could lead to the prima facie conclusion that such events are indeed likely in the ordinary course of events in relation to the goods concerned.

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).

Article 8(5) EUTMR is not intended to prevent the registration of all marks identical or similar to a mark with reputation. According to established case-law, ‘once the condition as to the existence of reputation is fulfilled, the examination has to proceed with the condition that the earlier mark must be detrimentally affected without due cause’ (14/09/1999, C-375/97, Chevy, EU:C:1999:408, § 30).

In the present case, apart from claiming a reputation and arguing that ‘there is a similarity’ between the conflicting marks due to the element ‘Hajdú’ ‘and this common element establishes a link’ between the trade marks and that the opponents thinks that the applicant would take unfair advantage and that the use of the contested mark for flour and preparations made from cereals would be ‘even detrimental to the distinctive character or repute’, the opponent did not submit any facts, arguments or evidence that could support such a conclusion.

The opponent’s arguments are rather general statements about the existence of a link and further of a risk of injury. However, the Opposition Division does not find it self-evident that the use of the contested sign for the remaining contested goods in Class 30 would be likely to bring to mind the earlier mark and take unfair advantage of the distinctive character or the repute of the earlier mark and/or be detrimental to its repute or distinctiveness.

As mentioned above, the opponent should have submitted 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, which could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

This is confirmed by Rule 19(2)(c) EUTMIR, which establishes that if the opposition is based on a mark with a reputation within the meaning of Article 8(5) EUTMR, the opponent must submit evidence showing that the mark has a reputation, as well as evidence or arguments demonstrating that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

According to Article 76(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office restricts its examination to the facts, evidence and arguments submitted by the parties and the relief sought.

Consequently, the opponent could also not establish that the contested sign would take unfair advantage of, or be detrimental to the distinctive character or repute of the earlier trade mark.

Since it has neither been established that the relevant public will make a mental connection (a ‘link’) between the signs in dispute nor that there is a risk of injury, some of the necessary conditions contained in Article 8(5) EUTMR are not fulfilled, and the opposition must be rejected under Article 8(5) EUTMR.

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

Vita VORONECKAITE

Denitza STOYANOVA-VALCHANOVA

Judit NÉMETH

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.