RichOmega | Decision 2760968

Date Published: Oct 1, 2017

OPPOSITION No B 2 760 968

MARKANT Services International GmbH, Hanns-Martin-Schleyer-Str. 2, 77656 Offenburg, Germany (opponent), represented by Weickmann & Weickmann Patent- und Rechtsanwälte PartmbB, Richard-Strauss Str. 80, 81679 München, Germany (professional representative)

a g a i n s t

Seafood Sales Aps Limited Co., Havnepladsen 12, 9900 Frederikshavn, Denmark (applicant).

On 28/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 760 968 is upheld for all the contested goods.

2.        European Union trade mark application No 15 466 154 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 15 466 154 for the word mark ‘RichOmega’, namely against all the goods in Class 29. The opposition is based on European Union trade mark registration No 6 685 614 for the word mark ‘OMEGA’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

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

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

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely European Union trade mark No 6 685 614 for the word mark ‘OMEGA’.

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.

The date of filing of the contested application is 23/05/2016. 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 23/05/2011 to 22/05/2016 inclusive.

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

Class 29:        Meat, fish, poultry and game.

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 15/11/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 20/01/2017 to submit evidence of use of the earlier trade mark; this deadline was extended on 24/01/2017 until 20/03/2017. On 20/03/2017, within the time limit, the opponent submitted evidence of use. In its submission, the opponent pointed out that, as the contested application covers only fish, seafood and molluscs in Class 29, it seems appropriate and sufficient for the opponent to prove the use of the earlier trade mark with regard to those goods.

The evidence to be taken into account is, in particular, the following:

• Annex 1: reproductions of the packaging of products bearing the trade mark ‘OMEGA’. The trade mark  is displayed at the top of each item of packaging, either in the centre or in the right-hand corner. They refer to the following products:

• ‘Alaska Seelachsfilets’ (Alaska pollack fillets)
• ‘Wildlachs Filet’ (wild salmon fillet)
• ‘King Prawns’
• ‘Fischstäbchen’ (fish fingers)
• ‘Alaska-Seelachs-Portionsfilets Paniert’ (breaded and portioned Alaska pollack fillets).

• Annex 2: turnover lists relating to various products marketed under the earlier mark ‘OMEGA’, namely frozen fish and king prawns, for 2012-2015. According to the opponent, the abbreviation ‘OM’ refers to the trade mark ‘OMEGA’ in the attached documents, which is supported by the cover of each year’s extract showing ‘OM’ and ‘OMEGA’ next to each other.

• Annex 3: 18 sample invoices issued by Zentrale Handelsgesellschaft-ZHG-mbH to various companies in Germany between 25/04/2012 and 28/05/2016. The invoices include documents from each year within the above period. The trade mark ‘OMEGA’ appears on most of the invoices, followed also by the abbreviation ‘OM’, but on some of the invoices only the abbreviation ‘OM’ is visible before the relevant product. The range of products referred to in the invoices covers frozen fish products, including ‘Alaska Seelachsfilets’ (Alaska pollack fillets), ‘Fischstäbchen’ (fish fingers) and ‘Riesengarnelen’ (king prawns).

• Annex 4: an affidavit issued on 05/12/2016 by Mr Mario D’Aquila, business unit manager for marketing and communication of the opponent’s company MARKANT Services International GmbH, formerly MARKANT Handels- und Service GmbH (‘MARKANT’), the relevant points of which are the following:

• By way of a licence agreement, the opponent’s company, MARKANT, has granted the company Zentrale Handelsgesellschaft-ZHG-mbH (‘ZHG’) – whose address, like the opponent’s, is Hanns-Martin-Schleyer-Straße 2, 77656 Offenburg, Germany – the right to use the earlier mark ‘OMEGA’ in relation to all of the goods for which the mark is registered. The latter company is a fully owned subsidiary of MARKANT and distributes many different kinds of goods under the denomination ‘OMEGA’ to customers in Germany and other countries of the European Union.

• Any article description on ZHG’s invoices that starts with the abbreviation ‘OM’ relates to an article sold under the denomination ‘OMEGA’.

• ZHG used the trade mark ‘OMEGA’ between 23/05/2011 and 22/05/2016 in relation to many different kinds of food, including frozen fish. In 2012-2015, ZHG generated the following turnover figures for sales of frozen fish under the trade mark ‘OMEGA’:

2012	2013	2014	2015
880 329	674 127	633 544	605 335

The opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR). Taking into account the nature of the documents that have not been translated and are considered relevant for the present proceedings, namely reproductions of packaging, the invoices and turnover figures, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.

As far as the affidavit by Mr Mario D’Aquila is concerned, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all.

The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the affidavit are supported by the other items of evidence.

Furthermore, according to Article 15(2) EUTMR, use of the mark with the consent of the proprietor is deemed to constitute use by the proprietor. This means that the owner must have given its consent prior to the use of the mark by the third party.

A typical case of use by third parties is use made by licensees. Use by companies economically related to the trade mark proprietor, such as members of the same group of companies (affiliates, subsidiaries, etc.), is similarly to be considered authorised use (30/01/2015, T-278/13, now, EU:T:2015:57, § 38). Where goods are produced by the trade mark proprietor (or with its consent), but subsequently placed on the market by distributors at wholesale or retail level, this is to be considered use of the mark (17/02/2011, T-324/09, Friboi, EU:T:2011:47, § 32; 16/11/2011, T-308/06, Buffalo Milke, EU:T:2011:675, § 73).

As demonstrated by the affidavit submitted, the earlier mark was used by the opponent’s licensee. To this extent, and in accordance with Article 15(2) EUTMR, the Opposition Division considers that the use made by this licensee was made with the opponent’s consent and thus is equivalent to use made by the opponent.

The invoices show that the place of use is Germany. This can be inferred from the language of the documents (German), the currency mentioned (euros) and some addresses in Germany. If the earlier mark is a European Union mark, it must be used ‘in the Union’ (Articles 15(1) and 42(2) EUTMR). Article 15(1) EUTMR must be interpreted as meaning that the territorial borders of the Member States should be disregarded when assessing whether or not an EUTM has been put to ‘genuine use’ in the Union (19/12/2012, C-149/11, Onel / Omel, EU:C:2012:816, § 44). Therefore, the evidence relates to the relevant territory.

All of the evidence is dated within the relevant period or refers to events falling within this period.

The documents filed, namely the invoices and the turnover lists, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use of the earlier mark by the proprietor’s licensee Zentrale Handelsgesellschaft-ZHG-mbH (‘ZHG, particularly in the light of the affidavit attached. The information in the turnover lists and the invoices is in line with the statements of Mr Mario D’Aquila, business unit manager for marketing and communication of the opponent’s company. It is true that the turnover lists do not indicate the currency, but based on the other documents attached by the applicant, namely the invoices issued in Germany, it can be safely assumed that the amounts are in euros.

The reproductions of packaging referring to the goods at issue further support genuine use.

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

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

In the present case, the earlier mark is registered as a word mark, ‘OMEGA’. The reproductions of packaging submitted show use of the earlier mark as a figurative sign, . However, the differences between this figurative sign and the word mark, namely the typeface and stylisation of the word ‘OMEGA’, the figurative element of a flower above the letter ‘G’, the two curved lines below the word and the black background, are all either purely decorative elements or elements that have a low impact on the consumer’s perception of the mark.

It follows that the material submitted demonstrates that the mark ‘OMEGA’ has been used as a trade mark identifying the commercial origin of the goods provided by the opponent and that the abovementioned variations do not alter the distinctive character of the mark as registered, that is, the word mark ‘OMEGA’.

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

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

Taking into account the evidence submitted by the opponent in its entirety, although it 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.

However, as the opponent also noted, the evidence does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

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

Class 29:        Fish.

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, and for which the proof of use submitted has been accepted by the Opposition Division, are the following:

Class 29:        Fish.

The contested goods are the following:

Class 29: Fish, seafood and molluscs.

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.

Fish is identically contained in both lists of goods.

The contested seafood includes, as a broader category, the opponent’s fish, since seafood is considered any form of sea life treated as food. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested molluscs coincide with the opponent’s fish in their method of use, end users, providers and distribution channels. Moreover, these goods are in competition. Therefore, they are highly similar.

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

3. The signs

OMEGA	RichOmega
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 Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, such as the public in the United Kingdom and Ireland, as, while the coinciding element ‘OMEGA’ has an internationally recognised meaning, the word ‘Rich’ in the contested sign is English.

The Court has held that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).

In the present case, even though the verbal element ‘RichOmega’ of the contested sign does not exist as such in English, it is reasonable to assume that English-speaking consumers in the relevant territory will break it up into two separate words, ‘Rich’ and ‘Omega’, both of which have a clear and specific meaning, as explained in detail below. The consumers will thus perceive this mark as a combination of these words.

In relation to the relevant goods, the word ‘OMEGA’ in the earlier mark might be perceived by some of the relevant consumers as an allusive reference to omega-3 and omega-6 fatty acids, which are known for their nutritional benefits; the foodstuffs at issue are natural sources of them. However, given that there are no digits or cardinal numbers in the sign, such an association with omega-3 and omega-6 fatty acids will not necessarily be made. The rest of the consumers, who will not make this association, will consider this word as referring to the final letter of the Greek alphabet, which has no close connection with the goods at issue. Nevertheless, irrespective of whether ‘OMEGA’ is understood as a reference to omega-3 and omega-6 fatty acids or as the name of a Greek letter, this word is considered a distinctive element, since it is neither descriptive of nor allusive to the relevant goods to an extent that would materially affect its degree of distinctiveness.

The same findings apply to the identical word component ‘Omega’ in the contested sign. The first word component, ‘Rich’, of the contested sign is, however, a laudatory element in relation to the relevant goods, as it refers to ‘superior quality, especially so as to be wholesome or nourishing; made from fine ingredients’ (information extracted from Oxford English Dictionary on 13/09/2017 at http://www.oed.com/view/Entry/165533?rskey=cApprs&result=1&isAdvanced=false#eid). The part of the public that understands the meaning of this weak element will not pay as much attention to it as to the other, more distinctive, element of the mark. Consequently, the impact of this element is limited when assessing the likelihood of confusion between the marks at issue for this part of the relevant public.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs are similar to the extent that they coincide in the letter sequence ‘Omega’. On the other hand, they differ in the letter sequence ‘Rich’ at the beginning of the contested sign, which has no equivalent in the earlier mark. As both signs are word marks, it is irrelevant whether they are written in lower case or upper case letters or in a combination of both (31/01/2013, T-66/11, Babilu, EU:T:2013:48, § 57).

It is an established practice that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, mainly 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. However, this consideration cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T-344/09, Cosmobelleza, EU:T:2013:40, § 52).

Given that the initial part of the contested sign consists of the laudatory, and therefore weak, word ‘Rich’ and that the distinctive verbal element ‘OMEGA’ of the earlier mark is fully included in the contested mark, the signs are considered visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛OMEGA’, present identically in both signs. The pronunciation differs in the sound of the letters ‛Rich’ of the contested mark, which has no counterpart in the earlier sign. Taking account of the distinctive and weak elements of the signs as described above, the signs are considered aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks and their individual elements. To the extent that the element ‘Omega’ will be perceived in the contested sign and understood as explained above, the signs are conceptually similar. Since the word ‘Rich’ in the contested sign is considered weak and laudatory, 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, since it cannot be determined with certainty that the average consumer will understand the word mark ‘OMEGA’ as a reference to products containing omega fatty acids, given the absence of a cardinal number and the fact that this word also has at least one other meaning, the distinctiveness of the earlier mark must be seen as normal. The applicant has not filed any material that would allow the Opposition Division to conclude otherwise.

5. Global assessment, other arguments and conclusion

In the present case, the goods are identical and highly similar. The degree of attention of the relevant public, which consists of the public at large, is average.

The signs are highly similar on all levels, as explained in detail above in section c) of this decision.

As has been established above, the earlier mark, ‘OMEGA’, which is present in its entirety in the contested sign, is not descriptive or otherwise weak in respect of foodstuffs. When not followed by a figure, particularly the figure ‘3’ or ‘6’, it will not necessarily be associated with a type of fatty substance. Consequently, it must be granted a normal degree of distinctiveness (26/01/2010, R 708/2009-1, Omega, § 34).

Notwithstanding that the element ‘Rich’ is placed at the beginning of the contested mark, the fact that this element is weak and laudatory and the fact that the distinctive earlier mark is fully incorporated in the contested sign result in the signs being visually and aurally highly similar. The fact that both marks are likely to create in the average consumer’s mind the concept of the final letter of the Greek alphabet also makes them similar from the conceptual point of view.

From the wording in Article 8(1)(b) EUTMR, ‘the likelihood of confusion includes the likelihood of association with the earlier trade mark’, it follows that the concept of a likelihood of association is not an alternative to that of a likelihood of confusion, but serves to define its scope. Indeed, due to their coinciding word ‘OMEGA’, it is highly conceivable that the relevant consumer will perceive the contested mark as 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). Therefore, it is conceivable that the target public may regard the goods designated by the trade mark applied for as coming from the same undertaking as the opponent’s goods, especially if those goods are identical or highly similar.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the relevant public. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 6 685 614. 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

Martin MITURA

Alexandra APOSTOLAKIS

Saida CRABBE

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.