heven | Decision 2523028 - Einig-Zenzen GmbH & Co. KG v. KGH POLSKA Sp. z o.o.

Date Published: Sep 25, 2017

OPPOSITION No B 2 523 028

Einig-Zenzen GmbH & Co. KG, Carl-Friedrich-Benz-Str. 8, 56759 Kaisersesch, Germany (opponent), represented by Splanemann Patentanwälte Partnerschaft, Rumfordstr. 7, 80469 München, Germany (professional representative)

a g a i n s t

KGH Polska Sp. z o.o., ul. Chałubińskiego nr.8, 00 613 Warszawa, Poland (applicant), represented by Jarzunka I Wspólnicy Kancelaria Prawno-Pantentowa, ul. Słomińskiego 19/522, 00-195 Warszawa, Poland (professional representative).

On 21/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 523 028 is upheld for all the contested goods, namely 

Class 32:  Non-alcoholic beverages.

2.        European Union trade mark application No 13 625 397 is rejected for all the contested goods. It may proceed for the remaining goods.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 13 625 397, namely against all the goods in Class 32. The opposition is based on European Union trade mark registration No 1 919 273. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely European Union trade mark registration No 1 919 273.

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 17/02/2015. 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 17/02/2010 to 16/02/2015 inclusive.

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

Class 33:        Wines.

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 24/02/2016 according to Rule 22(2) EUTMIR, the Office gave the opponent until 24/04/2016 to submit evidence of use of the earlier trade mark. On request of the opponent, this time limit was extended by 2 months, until 24/06/2016. On 24/06/2016 within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Sales Statistics (in German with translation into English) regarding the sales of wines sold under the trade mark HEAVEN between January 2010 and June 2014. According to this document, the opponent sold a total of 2,651,325 bottles of wine during the mentioned period, bearing the trade mark ‘Blue Heaven’ or ‘Cordon Blue Heaven’. The bottles of wine were all exported to the following different countries: the People’s Republic of China, Cyprus, Japan, Czech Republic, Liechtenstein, Latvia and the Russian Federation. The total value of the sold products amount to 2,751,756.58 EUR.
• Sales Statistics (in German with translation into English) regarding the sales of wines sold under the trade mark HEAVEN between 01/07/2014 and 31/05/2016. According to this document a total of 547,912 bottles of wine bearing the trade mark ‘Heaven’ or ‘Blue Heaven’ were sold to customers in China, Germany, France, Great Britain, Hong Kong, Japan, Kazakhstan, Lithuania, Mongolia, Austria, The Russian Federation and Cyprus.
• Invoices: Two invoices, dated 08/07/2014 and 10/11/2014, issued to clients in Russia and the People’s Republic of China. The invoices contain reference numbers and the trade mark ‘Heaven’ in relation to wines. The product on the invoices are referred as ‘Heaven’ for a total of 36,000 bottles of wine, with a total value of 35,380 EUR.  
• Extract of the Catalogue: not dated copy of the opponent’s catalogue in German with translation into English, showing boxes with wine bearing the trade mark ‘Heaven’.

The applicant argues that the sales statistics are internal documents issued by the opponent itself and that they cannot be considered as a clear and objective evidence of use given that it could have been made by anyone. The applicant further argues that the invoices show no objective information as they regard the sale outside the European Union – to China and Russia. They also present the number of sale of total 4,400 cartons to only two customers and refer only to the year 2014, which is not sufficient to proof use of the trade mark

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

The evidence shows that the goods were manufactured in Germany and sold in several countries, namely the People’s Republic of China, Germany, France, Great Britain, Japan, Kazakhstan, Lithuania, Mongolia, Austria, The Russian Federation and Cyprus. This clearly shows that the goods were exported from the relevant territory.

The applicant’s argument according to which the invoices show no objective information as they refer to sales outside the European Union, must be put aside. According to settled case law genuine use may result from the export of goods to operators located outside Europe.

Consequently, and in accordance with Article 15(1), second subparagraph, point (b) EUTMR, the evidence of use filed by the opponent contains sufficient indications concerning the place of use. According to Article 15(1), the affixing of the European Union trade mark to goods in the Union solely for export purposes also constitutes use within the meaning of Article 15(1) EUTMR. The mark has to be used in the relevant market – that is, the geographical area where it is registered.

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.

Contrary to what the applicant argues, the documents filed, namely the ‘invoices’, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

Whilst it is correct that the invoices refer to 4400 cartons for two deliveries during the year 2014, it has to be considered that – as can be seen in the invoices – every carton contains 6 or 12 bottles (in case of order No 20417 of Invoice No 127). Therefore, the total of 4400 cartons amount to 36,000 bottles of wine sold under the trade name ‘Heaven’. The Opposition Division is therefore of the opinion that the invoices corroborate the sales statistics. The volumes of sales, referring to two different customers in different countries are dated within one year, representing 36,000 sold bottles and a total amount of around 35,380 EUR, are deemed to be significant enough not to be concluded as merely token, minimal or notional for the sole purpose of preserving the rights conferred by the mark.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier mark.

The evidence shows that the mark has been used as registered for all the goods for which the mark is registered, namely for wines.

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.

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 33: Wines.

The contested goods are the following:

Class 32:  Non-alcoholic beverages.

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 33

The contested Non-alcoholic beverages and the opponent’s wines are often sold side by side both in shops and bars and on drinks menus. These goods have the same method of use and they may be in competition. The have the same distribution channels and they are directed at the same public. Therefore, these goods are similar to a low degree.

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 similar to a low degree are directed at the public at large. The degree of attention is considered to be, on the whole, average.

3. The signs

Heaven
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 earlier mark, ‘HEAVEN’, will be perceived as an invented word with an average degree of distinctiveness in certain territories, namely in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public.

The earlier mark is a single word mark consisting of the letters ‘Heaven’ in standard typeface. 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 lowercase letters is irrelevant.

The contested sign is a figurative sign consisting of the string of letters ‘HEVEN’ in black capital letters that are slightly stylised and placed between two parallel lines. As the word is fanciful it enjoys an average degree of inherent distinctiveness in the context of the relevant goods. The figurative element in form of two parallel lines will be perceived as merely decorative. Therefore this element is considered to be weak.

Furthermore, 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, since 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; 19/12/2011, R 233/2011-4, Best Tone (fig.) / BETSTONE (fig.),

§ 24; 13/12/2011, R 53/2011-5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Visually, the signs coincide in the sequence of letters ‘HE*VEN’ which is distinctive from the perspective of the relevant public. However, they differ in the additional third letter ‘A’ in the earlier mark that has no counterpart in the contested sign, as well as in the graphical stylisation, which is however only minimal. They further differ in the two parallel lines in the contested sign that play, however, a lesser role given its merely decorative function.

Consequently, the beginnings and endings of the conflicting signs are identical. 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 signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛HE*VEN’, present identically in both signs which is distinctive in both signs. The pronunciation differs in the sound of the letter ‛A’ in the third place of the earlier sign which has no counterpart in the contested mark. Given that the signs only differ in one letter, the pronunciation of the signs coincides in rhythm and intonation.

Therefore, the signs are highly similar.

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

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).

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

The goods have been found to be lowly similar. They are directed at the public at large whose degree of attention in relation to those goods is average. The earlier mark enjoys an average degree of inherent distinctiveness. From the perspective of the non-English-speaking public in the European Union, none of the signs confer any meaning.

The signs are visually and aurally similar to a high degree due to the sequence of letters ‘HE*VEN’ that they have in common and which forms the entire contested sign. The one letter difference ‘A’ in the middle of the earlier sign is likely to go unnoticed by the consumers who generally tend to focus on the beginning of a sign when they encounter a trade mark.

Moreover, it should be borne in mind that the relevant goods are beverages and, since these are frequently ordered in noisy establishments (bars, nightclubs), the phonetic similarity between the signs is particularly relevant (15/01/2003, T-99/01, Mystery, EU:T:2003:7, § 48, which reflects this line of reasoning).

Furthermore, the General Court has held that, in the wines sector, consumers usually

describe and recognise wine by reference to the verbal element that identifies it, particularly in bars and restaurants, where wines are ordered orally after their names have been seen on the wine list (23/11/2010, T-35/08, Artesa Napa Valley, EU:T:2010:476, § 62; 13/07/2005, T-40/03, Julián Murúa Entrena, EU:T:2005:285, § 56; 12/03/2008, T-332/04, Coto d’Arcis, EU:T:2008:69, § 38). Also in the present case, it is appropriate to attach particular importance to the phonetic similarity between the signs at issue. These considerations come into play in the finding of likelihood of confusion.

In the light of the foregoing, also taking into account the interdependence principle mentioned above, the high degree of visual and aural similarity between the signs at issue is sufficient for it to be considered that a substantial part of the relevant public could reasonably believe that the goods bearing the contested sign ‘HEVEN’, come from the same undertaking, or from economically linked undertakings, as those bearing the earlier mark, ‘HEAVEN’.

Therefore, although the contested sign contains a figurative element and a slightly stylised verbal element, a likelihood of confusion still exists because the role of the additional graphical and figurative elements in the contested mark, as already explained above in the section c), is secondary.

Account is also taking of the fact that the 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).

Considering all the above, there is a likelihood of confusion on the part of the non-English-speaking part of the public in the European Union. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 1 919 273. It follows that the contested trade mark must be rejected for all the contested goods.

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

Lars HELBERT

Sigrid DICKMANNS

Claudia MARTINI

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.