OPPOSITION No B 2 308 545

J.E.O’Brien & Sons Limited, O’Brien House, Magna Drive, Magna Business Park, Citywest, 24, Dublin, Ireland (opponent), represented by Maclachlan & Donaldson, Unit 10, 4075 Kingswood Road, Citywest Business Campus, Dublin D24 C56E, Ireland (professional representative)

a g a i n s t

Flowers Bakeries Brands, LLC, 1919 Flowers Circle, 31757 Thomasville, Georgia, United States of America (applicant), represented by CSY London, 10 Fetter Lane, London EC4A 1BR, United Kingdom (professional representative).

On 20/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 308 545 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 12 156 121 , namely, after the limitation filed on 06/02/2014, bakery products, namely bread in Class 30.

The opposition is based on the following earlier rights:

 Irish trade mark registration No 240 151 ‘WONDER’ (word mark);

 Irish trade mark registration No 177 273 (figurative mark);

 Irish trade mark registration No 146 181 ‘WONDER’.

The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

SUBSTANTIATION OF EARLIER IRISH TRADE MARK REGISTRATION No 146 181 ‘WONDER’

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 data base of the Irish Patents Office.

This evidence is not sufficient to substantiate the opponent’s earlier Irish trade mark registration No 146 181 ‘WONDER’ because it is apparent from the certificate that the earlier mark was renewed for the last time on 24/07/2008 and the opponent has not filed a renewal certificate.

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 this earlier mark.

Therefore, the Opposition Division will assess the merits of the opposition only insofar as it is based on Irish trade mark registration No 240 151 ‘WONDER’ (word mark) and Irish trade mark registration No 177 273 (figurative mark).

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, now Article 47(2) and (3) EUTMR), 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 Irish trade marks on which the opposition is based.

The contested application was published on 06/11/2013. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Ireland from 06/11/2008 to 05/11/2013 inclusive.

The request was submitted in due time and is admissible as the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

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

Irish trade mark registration No 240 151 ‘WONDER’ (word mark)

Class 2: Colours for food.

Class 29: Fruit fillings for confectionery; puree, butter, butter for use in cooking, butter oils; ingredients included in class 29 for foods; cooked, dried, frozen or preserved fruits and vegetables; jams; jelly for food; jelly crystals; mincemeat; edible nuts; prepared and processed nuts; roasted and salted nuts; pastes included in class 29; edible seeds; preparations for making sauces; edible vegetable oils; but not including instant meals and snack foods; meat extracts; compotes; eggs; milk and milk products; edible oils and fats.

Class 30: Bread, biscuits, cakes, pastry and confectionery; bread mixes, cake mixes and pastry mixes; frozen pastry; baking and cooking additives and enhancers; baking powder; ice cream; yeast; salt and peppers; essences, sweetening materials, flavourings, syrups and thickening agents; edible decorations; flour; icing; meringues; jelly included in class 30; coated nuts (confectionery); pastes included in class 30; caraway seeds; processed cereal seeds; sesame seeds; spices; sauces; but not including instant meals and snack foods; coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; preparations made from cereals; ices; honey, treacle; yeast, mustard; vinegar; ice; food thickening agents; moisteners (consisting of or containing sugar) for food.

Class 31: Unprocessed edible seeds; fresh nuts; unprocessed edible nuts; fresh fruit and vegetables; malt.

Class 32: Non-alcoholic drinks and preparations for making such drinks, all included in class 32; syrups; beers; mineral and aerated waters; fruit drinks and fruit juices.

Irish trade mark registration No 177 273

Class 29: Fruit fillings for confectionery; puree; food thickening agents; all included in class 29.

Class 30: Bread, biscuits, cakes, pastry and confectionery; bread mixes, cake mixes and pastry mixes; frozen pastry; baking and cooking additives and enhancers; baking powder; ice cream; yeast, salt and peppers; essences, sweetening materials, flavourings, syrups and thickening agents included in class 30; but not including instant meals and snack foods.

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 or services in respect of which it is registered and on which the opposition is based.

On 02/07/2018, in accordance with Rule 22(2) EUTMIR the Office gave the opponent until 07/09/2018 and after an extension, until 07/11/2018 to submit evidence of use of the earlier trade marks. On 06/11/2018, within the time limit, the opponent submitted evidence of use. Moreover, as the opponent had already submitted documents along with the further facts, evidence and arguments in support of the opposition, these documents have to be taken into account for the assessment of the genuine use of the earlier marks.

The evidence to be taken into account is hence the following:

 Witness statement from Jason O’Brien, according to which the trade mark ‘Wonder’ has been used in Ireland since 1967 ‘originally in relation to soft drinks but over the past 20 years or more in relation to a wide range of goods both in Ireland and Northern Ireland including flour, bread and cake mixes, chocolate, colours, flavours and compounds, dry goods, seeds, sugars, toppings, cakes decorations, fruit fillings and jams, bread, pastries, scones, donuts tray bakes, seasonal bakery treats, ice cream toppings and inclusions milkshakes, baking accessories’, and providing revenue figures for Northern Ireland and the Republic of Ireland;

 Catalogue ‘A World of Bakery Wonder’ showing a table of Wonder products, product labels, packaging and advertising flyers of Wonder products as described in the witness statement above. The document is not dated, but one of the labels (Wonder Sponge Mix) has a production date 04/2007 and an expiry date 10/2008.

 Six invoices issued by ‘O’Brien ingredients’ dated in 2013 (28/06, 10/07, 02/10) and 2014 (08/09, 29/09, 21/11), four of which are addressed to recipients in Ireland and two in Northern Ireland (UK), mentioning the earlier mark ‘Wonder’ with the words ‘FINGER DONUT’, ‘PLAIN RING DONUT’, ‘APPLE SLICED’, ‘DULCE DE LECHE’, and six invoices in 2018, issued by ‘O’Brien ingredients’ or ‘Odaios Foods’ which mention ‘GLAZED SAUSAGE ROLL’;

 Flyer for a 10 % discount on ‘Wonder Lemon Fruit Filling 45 %’, ‘valid until end of January 2009’;

 2013 Catalogue of O’Brien Ingredients showing the earlier mark under several categories of products and for different subcategories, namely, the following: under the category ‘Pastry sheets’: Wonder Puff Pastry Sheets and Wonder Pastry Vanilla Strips; under ‘Scones – Bake-off’: Wonder Cherry/Fruit/Plain/Wholemeal Scone; under ‘Sausage Rolls’, Medium and Large; under ‘Donuts – Plain’: Plain Ring Donut, Plain Finger Donut, Plain Ball Donut.

 2011-2012 Catalogue of Odaios Foods (an Irish food service company), mentioning ‘Wonder Flour’ and ‘Wonder Flour Mix’.

 2011-2012 Catalogue of O’Brien Ingredients mentioning the earlier mark under the category ‘COMPOUNDS’.

 Order form entitled ‘Gala Conference 2012 – O’Brien Ingredients’ showing a list of pastry items mentioning the earlier mark along with the products ‘Plain Finger Donut’ and ‘Puff Pastry Slice’.

From the outset, the Opposition Division notes, as far as the witness statement is concerned, that Article 10(4) EUTMDR expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(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. Nevertheless, 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. On the other hand, 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 declaration are supported by the other items of evidence.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency.

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.

In the present case, the documents filed, in particular, the affidavit and the invoices, provide some indications as to the commercial volume, the territorial scope, the duration, and the frequency of use of the earlier marks. However, these indications are not sufficient to consider the use of the earlier marks as genuine for the reasons that follow.

In the witness statement, it is claimed that the earlier marks have been used across the whole relevant territory ‘over the past 20 years or more’ in relation to a wide variety of goods ‘including flour, bread and cake mixes, chocolate, colours, flavours and compounds, dry goods, seeds, sugars, toppings, cakes decorations, fruit fillings and jams, bread, pastries, scones, donuts tray bakes, seasonal bakery treats, ice cream toppings and inclusions milkshakes, baking accessories’ and that the sales of these products under a sign consisting of or containing the word element ‘WONDER’ varied between more than EUR 1,000,000 and EUR 1,500,000 during the five years of the relevant period.

However, the invoices seen in combination with the catalogues only allow the conclusion that the earlier marks have been used in relation to ‘FINGER DONUT’, ‘PLAIN RING DONUT’ (pastries), ‘APPLE SLICED’ (fruit fillings), ‘DULCE DE LECHE’ (the nature of which remains unknown), and long after the relevant period, in 2018, for ‘GLAZED SAUSAGE ROLL’ (pastries). Moreover, it is apparent from said invoices that as far as the relevant period is concerned, sales of these products generated less than EUR 60 in 2014 for ‘apple sliced’ and less than EUR 100 for ‘donut’ (dough) in 2013. Lastly, the sales for ‘Wonder dulce de leche’ amounted to less than EUR 250 in 2014. Considering that the invoices show an extremely low volume of sales, they cannot corroborate the turnover indicated in the witness statement.

Moreover, the remaining documents, namely the catalogues (two dated 2011-2012, one dated 2013 and two undated) and a flyer for ‘Wonder Lemon Fruit Filling 45 %’ for 2009 do not corroborate the claims in the witness statement as to the long-standing use of the earlier mark and, as they do not establish any sales or even outward use, they cannot provide indications as to the frequency of use either.

All in all, the objective evidence does not corroborate the witness statement, and hence does not provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use of the earlier marks for it to be considered genuine. Although use of the mark need not be quantitatively significant for it to be deemed genuine, in the present case, since neither the territorial scope of the use is particularly wide, nor such use appears long standing or even regular as sales were proven, at most, for several months during the last two years of the relevant period, the extremely low volume of sales shown by the invoices is not compensated by any other factor.

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; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

For the reasons explained above, the Opposition Division considers that the opponent has not provided sufficient indications concerning the extent of use of the earlier marks.

Since the conditions for proof of use are cumulative (05/10/2010, T‑92/09, STRATEGI / Stratégies, EU:T:2010:424, § 43) and the extent of use of the earlier marks has not been proven, it is not necessary to assess whether the evidence provides sufficient indications regarding the place, time and nature of use of the earlier marks.

Therefore, the opposition is rejected.

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

Zuzanna STOJKOWICZ

Marine DARTEYRE

Julie, Marie-Charlotte HAMEL

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.