pansany | Decision 2781634

Date Published: Sep 22, 2017

OPPOSITION No B 2 781 634

Panzani, 4, rue Boileau, 69006 Lyon, France (opponent), represented by María José Garreta Rodríguez, Aribau, 155, bajos, 08036 Barcelona, Spain (professional representative)

a g a i n s t

Elixhausener Landbäckerei, Tiefenbachstraße 39, 5161 Elixhausen, Austria (applicant).

On 04/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 781 634 is upheld for all the contested goods.

2.        European Union trade mark application No 15 532 931 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 532 931. The opposition is based on, inter alia, French trade mark registration No 1 247 001 ‘PANZANI’. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier French trade mark registration No 1 247 001 ‘PANZANI’, for which the opponent claimed repute in France.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. The signs

PANZANI
Earlier trade mark	Contested sign

The relevant territory is France.

Visually, the signs are similar to the extent that they coincide in the letters ‘PAN*AN*’. However, they differ in their fourth and last letters, namely ‘Z’ and ‘I’ in the earlier mark and ‘S’ and ‘Y’ in the contested sign. The signs also differ in the brown colour and in the fanciful typeface of the contested sign that have no counterpart in the earlier mark. Therefore, the signs are visually similar to a high degree.

Aurally, despite the fact that the signs differ in two of their letters, the pronunciation of the signs is highly similar in French since the pronunciation of the letters ‘Z’ and ‘S’ is very close and the letters ‘I’ and ‘Y’ will both be pronounced [i].  

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.

Taking into account the abovementioned visual and aural coincidences, the signs under comparison are similar to a certain degree. 

2. Reputation of the earlier trade mark

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

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 14/06/2016. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in France prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely

Class 30:        Alimentary pasta products in all forms, ravioli, cannelloni (...) prepared sauces.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 22/02/2017 the opponent submitted, in particular, the following evidence:

• Seven invoices under annex 2 dated between 02/04/2010 and 14/11/2014 issued by the opponent to companies in France, namely ‘Scadif 77 Entrep Leclerc’ and ‘Carrefour hypermarchés France SAS’. The trade mark ‘PANZANI’ is mentioned next to each product description and on the top of the invoices under the logo . The invoices are for different types of pastas (‘fusilli’, ‘capellini’, ‘farfalle’, ‘coquillage’, ‘spaghetti’, ‘tagliatelle’, ‘penne’, ‘lasagne’, ‘cannelloni’, ‘macaroni’, ‘coquillette’, ‘ravioli’) and for different type of sauces (‘tomate fraîche’, ‘tomacoulis’, ‘tomate basilic’, ‘provençale’, ‘tomate cuisine’, ‘sauce tube tomate’, ‘tomate basilic’, ‘sauce velouté tomate’, ‘sauce olive basilic’). The total amount of the invoices vary between EUR 7.879, 85 and EUR 26.252, 85.

• A number of articles and publications under annex 3 from French media published between 01/02/2015 and 17/06/2016 in relation to the trade mark ‘PANZANI’. The relevant parts of these articles are translated into English. The article ‘pâtes pizzas tout le monde les adore!’ published in the ‘Maxi’ magazine where at the second page it is mentioned that ‘PANZANI’ is the leader of the pasta on the French market. The article ‘Les Français mangent toujours plus de pâtes’ published in the magazine ‘Réussir grandes cultures’ says that ‘PANZANI’ is the favourite pasta brand of French people as it represents the major percentage of sales in 2014, i.e. 35,4%. An article published in the website www.bra-tendances-restauration.com about the quality of a type of ‘PANZANI’ pasta particularly adapted to restaurant needs. An article in ‘Le Manager’ magazine where an investigation performed by ‘Kants’ shows that ‘PANZANI’ is the fifth trademark the most chosen in France. An article published in the website www.processalimentaire.com named ‘Les cinq voies d’innovation les plus bankables’ which is an investigation run by ‘Mintel’ to show the five major trends in food innovation. Among them, the trend of the ‘authentic easy to cook’ for which the fresh pasta of ‘PANZANI’ is even recommended by restorers. An article published in the magazine ‘LINEAIRES’ entitled ‘Star des sauces pour pâtes, la bolognaise bénéficie de toutes les attentions des fabricants, PANZANI en tête. Les lancements se multiplient avec des résultats au rendez-vous.’ Stating that the trademark ‘PANZANI’ is leading the pasta sauces. An article published in ‘lejournal’ magazine called ‘Panzani: de la société artisanale au géant de la pâte’ is showing how the founder of PANZANI has evolved from an artisanal company to be the ‘giant of the pasta’.
• Advertisements in French for  under annex 5 corresponding to 2014, 2015 and 2016 for different types of tomato sauces and different types of pastas.

• External surveys showing the position in the market of ‘PANZANI’ in France under annexes 3 and 6: survey carried out by Kantar Worldpanel published in the website www.radins.com shows that ‘PANZANI’ is among the ten brands the most used in France. Survey carried out by ‘Toluna’ to 5.500 people in July/August 2014 show that ‘PANZANI’ is the second favourite brand of French people. This survey is also published in the website www.lsa-conso.fr as shown under annex 3. Study carried out by ‘Marmiton’ and ‘Womenology’ carried out from 18th June to 9th September 2014 to 10.000 Marmiton web users showing that ‘PANZANI’ is the third favourite brand amongst women and the fourth one amongst men. An excerpt from a report entitled ‘Awareness Gauge of Panzani Brand’, provided by Ifop, which says that it was ‘conducted among a national representative sample of housewives’ and gives the questions from which the conclusion is drawn. It refers to the percentage of brand awareness for periods between February 2009 (i.e. 35% of ‘top of mind awareness’) and September 2014 (38% ´top of mind awareness´). It concludes that ‘[i]n France, Panzani is the most known pasta brand and has significantly overtaken its larger competitors: 7 interviewees out of 10 quote spontaneously the Panzani brand. A score of spontaneous awareness which is well above the Ifop benchmarks rated between 45% and 55% of spontaneous awareness on the food market.’ An excerpt from another study from the same source (in French), entitled ‘Historical barometer of notoriety/image of brands of pasta and sauces’. The translated part of the excerpt, however, does not provide information on the methodology or the question asked, but only refers to tables with percentages on the ‘reputation of the trademarks’ listed.

• An extract from ‘Le Grand Livre des Marques’ under annex 7 in which the 25 brands shown in this catalogue are recognized by over 90% of French people or are amongst their favourites. The ‘PANZANI’ logo  is displayed.

In its observations the opponent explains the constant evolution of the brand in France that was first launched in 1950 by its founder Jean Panzani and has now more than 1,300 employees working for Panzani and its subsidiaries all over France. The opponent further claims a high volume of worldwide annual sales and significant advertising expenditure, and submits tables in this regard showing the amounts claimed between 2009 and 2013.

On the basis of the above the Opposition Division concludes that the earlier trade mark has a reputation in France, for all the goods for which the opponent has claimed reputation.

The translated evidence (and excerpts thereof) indicates that the earlier trade mark has been used for a substantial period of time. It is apparent that the relevant public has been widely exposed to the earlier sign, as is suggested by the depiction and evaluation of the sign by different press sources. Furthermore, the public’s awareness of the earlier sign is reflected in a number of surveys.

The earliest reference to the recognition of the earlier mark by the public is February 2009 (in ‘Awareness Gauge of Panzani Brand’, provided by Ifop). It continues with a number of sources confirming the stable position of the earlier mark in the mind of the relevant consumer, as it is named the ‘2nd most preferred brand of the French people’ (survey conducted by Toluna in 2014). It is also included in the ‘The Big Catalogue of Brands’ among ‘the major brands naturally the closest to the hearts and minds of the French people’. The brand is further defined as ‘the favourite brand of the French people’ representing ‘35,4% of the sales in 2014’ (‘Réussir Grandes Cultures’).

The acknowledgement the brand receives from the relevant public continues over the following years, as confirmed by a number of articles from different sources, citing ‘PANZANI’ as the leader in the pasta market (‘Maxi’). It is also ranked fifth in the ‘the 10 brands more consumed in France’ (radins.com).

Even the two press articles dated after the relevant date refer to the relevant timeframe and further suggest that the recognition of ‘PANZANI’ is ongoing. This can be inferred from the excerpt from www.processalimentaire.com (dated 06/06/2016), which mentions a turnover of EUR 6.6 million reached for a period of 62 weeks in relation to a variety of ‘PANZANI’ pasta. These sources continue to place ‘Panzani’ among ‘the most chosen trademarks in France’ (‘Le Manager’, 17/06/2016).

The earlier sign has received extensive coverage in the press and has been the subject of studies and rankings, showing significant exposure of the public to the sign. Furthermore, examples of the commercial use of the opponent’s goods are given, namely the figures in the invoices submitted, most of which amount to more than EUR 20 000 per invoice. The significant market presence claimed by the opponent is confirmed by the percentages and sales quoted in the press cuttings (namely EUR 6.6 million over 62 weeks, as explained in the excerpt from www.processalimentaire.com, and the opponent’s brand representing ´35,4% of the sales in 2014’, stated by ‘Réussir Grandes Cultures’).

Although some of the articles mentioned postdate the filing date of the contested sign, they appear to be relevant. Given that reputation is usually built up over a period of years and cannot simply be turned on or off, and certain kinds of evidence (e.g. opinion polls, rankings) are not necessarily available before the relevant date, as they are usually prepared only after the dispute arises, so such evidence must be evaluated on the basis of its content and in conjunction with the rest of the evidence. In the present case, the articles referring to a period after the relevant date demonstrate a sufficiently high degree of recognition and, in combination with the rest of the evidence (the articles and surveys), show that the market conditions have not changed, namely that the earlier sign still enjoys a significant degree of recognition among the public in France.

The submitted evidence depicts the earlier mark ‘PANZANI’ the way it is registered, as a number of the submitted studies and articles refer to ‘PANZANI’ along with some of the relevant goods in a standard typeface. While it is true that in addition to the word mark ‘PANZANI’, the evidence also shows the sign ‘PANZANI’ in a figurative script with some additional elements (e.g.  ), the Opposition Division finds that the submitted evidence listed above and referring to the word mark ‘PANZANI’ is sufficient to conclude that reputation is proven for the earlier French trade mark registration No 1 247 001.

Taken together, the documents submitted are connected in a logical sequence. They also demonstrate the long-standing presence of the earlier sign in the relevant market. Therefore, in an overall assessment of the evidence submitted – namely the high degree of brand awareness demonstrated by evidence from independent sources (rankings in the press) and the variety of surveys and reports – the Opposition Division concludes that the earlier mark has been proven to enjoy a high degree of recognition among the relevant public in France.

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed 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, both signs contain the sequence of letters ‘PAN*AN’. Furthermore, despite the fact that the signs differ in two of their letters, the pronunciation is very similar. Therefore, this commonality between the sole verbal elements of the signs, which are distinctive for the goods at issue, is of material importance when assessing the ‘link’ between the conflicting marks.

As already established, the earlier mark is a reputed mark in France, therefore when relevant consumers perceive the contested sign , they will establish a link between it and the opponent’s reputed mark. This will be the case when the contested sign is used on goods that relate to food products and to dietetic food, dietetic preparations and food supplements in Classes 5 and 30 as they all belong to the foodstuff industry. They are all meant for human consumption. It is also common nowadays for producers who make foodstuffs to expand into different varieties of foodstuffs. The contested goods and the opponent’s goods for which reputation has been proven must be considered in the context of the current practice in the market, and account must be taken of the fact that foodstuffs and dietetic foodstuffs belong to proximate sections of the market.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that when encountering the contested mark the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T-301/09, Citigate, EU:T:2012:473, § 96).

4. Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

∙        it takes unfair advantage of the distinctive character or the repute of the earlier mark;

∙        it is detrimental to the repute of the earlier mark;

∙        it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

The opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark and be detrimental to its distinctive character and repute.

Before examining the opponent’s claims, it is appropriate to recall that the opposition is directed against the following goods:

Class 5: Food for medically restricted diets; dietetic foods adapted for medical use; dietetic food preparations adapted for medical use; dietetic foods adapted for invalids; dietetic foods adapted for infants; food supplements; dietetic sugar for medical use; dietetic preparations for children; dietary supplements and dietetic preparations; dietetic confectionery adapted for medical purposes; dietetic foods for use in clinical nutrition; health food supplements for persons with special dietary requirements.

Class 30: Bakery goods; gluten-free bread; crackers; crackers made of prepared cereals; crackers flavoured with spices; crackers flavoured with vegetables; crackers flavoured with meat; crackers flavoured with cheese; crackers flavoured with herbs; cookies; bread biscuits; biscuits having a chocolate coating; biscuits containing fruit; pastries, cakes, tarts and biscuits (cookies); biscuits for human consumption made from cereals; muffins; macaroons [pastry]; buns; savory pastries; petits fours [cakes]; sweet biscuits for human consumption; caramel; caramelised sugar; tortilla snacks; sesame snacks; snack food products made from maize flour; snack food products made from potato flour; rice-based snack food; snack foods prepared from maize; cereal-based snack food; snack foods consisting principally of confectionery; pastries; prepared desserts [pastries]; pastries containing creams; almond pastries; preparations for making bakery products.

As seen above, the earlier trade mark was found to have a reputation for:

Class 30:        Alimentary pasta products in all forms, ravioli, cannelloni (...) prepared sauces.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40).

The opponent bases its claim on the allegation that the contested sign is capable of taking unfair advantage of the distinctive character and of the repute of the earlier trade mark, because of the similarity between the signs and the reputation that the earlier sign enjoys. It is also stated that the relevant consumer could associate (and even confuse) the products originating from the applicant with those provided under the reputed mark. It is stated that the applicant’s entrance on the market would be facilitated by taking advantage of the opponent’s efforts and investments.

The concept of taking unfair advantage does not necessarily imply a deliberate intention to exploit the goodwill attached to someone else’s trade mark. In several cases, the General Court has held that the concept of taking unfair advantage ‘concerns the risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods covered by the mark applied for, with the result that the marketing of those goods is made easier by that association with the earlier mark with a reputation’ (19/06/2008, T-93/06, Mineral Spa, EU:T:2008:215, § 40; 22/03/2007, T-215/03, VIPS, EU:T:2007:93, § 40).

In the present case, it is likely that the use of the applicant’s sign with any of the contested goods would take unfair advantage of the earlier reputed mark in the sense recognised by the General Court in the preceding paragraph. In view of the reputation of the earlier mark, it seems inevitable that the image of the mark and the characteristics that it projects (e.g. a long-standing presence on the market and a high degree of brand awareness) will be transferred to the applicant’s goods if they are marketed under the contested sign.

Considering the similarities between the signs, the inherent distinctiveness of the sole element of the earlier mark and the earlier mark’s recognition on the market, as well as the fact that the goods of the reputed mark and the goods of the contested sign are placed in the same broad industry of foodstuffs, it is considered that the contested sign would receive an unfair ‘boost’. This would come as a result of the contested sign being linked with the opponent’s reputed mark in the minds of consumers in France, because the marketing of the applicant’s goods would be made easier, as its mark will be linked to the earlier mark by the relevant public in France. It is due to the opponent’s efforts in France, not those of the applicant, that the contested sign would already start with an immediate degree of recognition. Overall, the contested sign’s association with the opponent’s earlier well-known sign in France makes the contested sign easier for the relevant French consumer to remember and recognise, and so the contested sign would exploit the attractive powers or distinctiveness of the earlier mark. The contested sign will thus benefit from the repute of the earlier mark.

On the basis of the above, the Opposition Division concludes that the contested sign is likely to take unfair advantage of the distinctive character or the repute of the earlier trade mark.

The opponent also argues that use of the contested trade mark would be detrimental to the repute and the distinctive character of the earlier trade mark.

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark. It follows that there is no need to examine whether other types also apply.

5. Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must be rejected for all the contested goods.

Given that the opposition is entirely successful under Article 8(5) EUTMR it is not necessary to examine the remaining grounds and earlier rights on which the opposition was based.

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

Benoit VLEMINCQ

Sandra IBAÑEZ

Begoña URIARTE VALIENTE

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.