OPPOSITION No B 1 698 755

Max Kiene GmbH, Oberhafenstr. 1, 20097 Hamburg, Germany (opponent), represented by Hauck Patentanwaltspartnerschaft mbB, Kaiser-Wilhelm-Straße 79-87, 20355 Hamburg, Germany (professional representative)

a g a i n s t

Frito-Lay Trading Company GmbH, Spitalgasse 2, 3011 Bern, Switzerland (applicant), represented by Bomhard IP S.L., C/Bilbao 1, 5º, 03001 Alicante, Spain (professional representative).

On 28/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 1 698 755 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 8 897 324 (figurative mark). The opposition is based on the following earlier trade marks:

1. European Union trade mark registration No 99 465 (figurative mark),

2. German trade mark registration No 675 619 (figurative mark),

3. International trade mark registration No 783 547  (figurative mark) designating the Czech Republic, Hungary and Poland.

The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION – EARLIER TRADE MARKS 2 AND 3

According to Article 76 (1) EUTMR (in the version in force at the time of commencement of the adversarial part, now Article 95(1) EUTMR), in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the Office will give the opposing party the opportunity to submit the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR (in the version in force at the time of commencement of the adversarial part), within the period referred to above, the opposing party must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark that is not a European Union trade mark, the opposing party must submit a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR (in the version in force at the time of commencement of the adversarial part).

In the present case, the evidence filed by the opponent consists of an extract from the database of the German Patent and Trade mark Office (for the earlier mark 2) and an extract from the database of WIPO (for the earlier mark 3). Both documents were submitted together with the notice of opposition on 22/07/2010.

Within the deadline for filing facts, evidence and arguments in support of the opposition (expiring on 18/10/2015, following an extension of the cooling-off period and several suspensions of proceedings), the opponent did not submit any further evidence.

The evidence mentioned above is not sufficient to substantiate the opponent’s earlier trade marks 2 and 3, because there is no proof of renewal. The opponent failed to prove the validity of the marks beyond the deadline of 18/10/2015. According to the information contained in the database extracts, the earlier mark 2 expired on 31/12/2013 and the earlier mark 3 expired on 06/05/2012. The opponent did not prove that the validity of the marks had been renewed after those dates.

According to Rule 20(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), if until expiry of the period referred to in Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on the earlier marks 2 and 3.

The assessment of the opposition will now continue on the basis of the remaining earlier mark 1.

PROOF OF USE

Proof of use of the earlier mark 1 was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.

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.

a) The goods

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

Class 29: Meat and fish products, meat extracts; meat, fish, fruit and vegetable preserves; dried fruits, dried vegetables; dried tropical and subtropical fruits, raisins, currants and pulses; roasted almonds and nuts of all kinds, roasted peanuts; nut snacks, namely roasted mixed nuts.

Class 31: Fresh fruit and vegetables, fresh tropical and subtropical fruits and pulses; almonds and nuts of all kinds, fresh or left natural, fresh peanuts.

The contested goods are the following:

Class 29: Chips, crisps, ready to eat snack foods consisting primarily of potatoes, potato chips and fabricated potato chips.

Class 30: Chips, crisps, puffs, corn chips, tortilla chips, rice chips, puffed and extruded snacks.

Some of the contested goods are identical or similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

b) 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 assumed to be identical are directed at the public at large. The degree of attention of the public will be low because the goods are common snack foods which are cheap and can be bought quite often.

c) The signs

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 element ‘MAX’ contained in the earlier mark will be perceived by the relevant public throughout the European Union either as a universally understandable term meaning ‘maximum, maximal’ or as the male first name ‘Max’. In the former case, the element ‘MAX’ clearly denotes the size of the goods or their packaging and is, therefore, considered non-distinctive. In the latter case, the name ‘Max’ has no meaning in relation to the relevant goods and the element is, therefore, distinctive.

The red circle in the earlier mark (depicted in one bold and one thin line) is a common geometrical shape in a common colour. Consequently, it is very weak, if not non-distinctive.

The earlier mark has no element that could be considered clearly more dominant (visually eye-catching) than other elements.

As to the contested sign, the stylised element ‘WALKERS’ has no meaning in relation to the relevant goods and is, therefore, distinctive.

The image of a potato crisp with a potato in the contested sign visually describes the kind of the goods concerned. Consequently, this element is non-distinctive.

The rectangular background of the earlier mark depicted in dark and light shades of grey is a basic geometrical shape in a common scale of colours. Consequently, it is very weak, if not non-distinctive.

It is considered that in the context of the contested sign, the element ‘MAX’ will most likely be perceived by the consumers only as a reference to ‘maximum, maximal’ (i.e. as a description of size) and not as the distinctive name ‘Max’. This is because the public will perceive the stylised distinctive element ‘WALKERS’ as the main indicator of commercial origin of the goods; the image of a potato crisp with a potato together with the element ’MAX’ will then be perceived only as descriptive indications of the kind and size of the goods, respectively, and will, therefore, be non-distinctive from the consumer’s point of view.

The stylised word ‘MAX’ and the image of a potato crisp with a potato in the contested sign are the dominant elements of the sign as they are the most eye-catching.

Visually, the signs coincide in ‘MAX’. However, they differ in the stylisation of this element and in all the other elements of the marks havening no counterpart in the trade mark of the other party, namely the circle and the red colour in the earlier trade mark and, as regards the contested sign, the distinctive element ‘WALKERS’, the image of a potato crisp with a potato and the rectangular background.

In view of the above findings, and given the public’s perception of the element ‘MAX’ in the contested sign, the signs are considered visually similar to a very low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛MAX’, present identically in both signs. The pronunciation differs in the sound of the letters ‛WALKERS’ of the contested mark, which have no counterparts in the earlier sign.

In view of the above findings, and given the public’s perception of the element ‘MAX’ in the contested sign when pronounced, the signs are considered aurally similar to a very low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks and the way the coinciding element ‘MAX’ will be perceived by the public. Based on these considerations, the marks are not similar conceptually (in case ‘MAX’ is perceived as a name in the earlier mark and as ‘maximum, maximal’ in the contested sign or in case ‘MAX’ is perceived as a non-distinctive term ‘maximum, maximal’ in both marks).

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen either as low (in case the word ‘MAX’ is perceived as ‘maximum, maximal’) or average (in case the word ‘MAX’ is perceived as a name) for all the goods in question.

e) Global assessment, other arguments and conclusion

The goods have been assumed identical. The earlier trade mark’s degree of distinctiveness is either low or average and the level of attention of the relevant public will be low.

The marks are visually and aurally similar to a very low degree on account of the coinciding word ‘MAX’ whereas conceptually, the marks are not similar. However, within the contested sign, the element ‘MAX’ will be perceived by the consumers rather as an indication of size than as an indicator of commercial origin. Consequently, the element ‘MAX’ does not have an independent distinctive role within the contested sign as claimed by the opponent. In view of these findings, the marks are not sufficiently similar for the public to confuse the commercial origin of the goods sold under the trade marks at hand, even if the public pays only a low degree of attention.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

COSTS

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

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Saida CRABBE

Vít MAHELKA

Cindy BAREL

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.