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Lidl Stiftung & Co., KG (“Lidl”), filed an EUTM application to register CASTELLO in classes 29 (including dried or candied foods, as well as preserved and frozen fruits and vegetables), 30 (including flour products and confectionery ingredients) and 31 (seeds, nuts and fresh fruits).
Hornor del Espinar, SL, (“HE”) filed a notice of opposition in respect of all the goods based on a likelihood of confusion with the marks above right.
The Opposition Division upheld the opposition in part for some goods on classes 29 and 30 and rejected it in relation to class 31.
The Opponent and the Applicant both appealed.
Proof of use of HE’s marks had been requested by Lidl at first instance. The Board of Appeal agreed with the Opposition Division that it had been sufficient, against which Lidl appealed.
The Court reiterated the position on demonstrating evidence of genuine use as established by the case law. It requires:
- Use in accordance with the essential function of a mark, i.e. to guarantee the identity of the goods or services for which it is registered. This excludes token use to preserve the legal right conferred by the trade mark.
- Public and outward use of the mark.
- Consideration of all the facts and circumstances, including
- the practices in the relevant field as a means of maintaining or creating a market share for the goods or services protected,
- the nature of those goods or services,
- the characteristics of the mark and
- the scale and frequency of use of the mark.
- An overall assessment that takes into account all those relevant factors, thus implying a degree of interdependence.
- The use need not be quantitatively significant. Even minimal use can therefore be sufficient to be classified as genuine, provided that it is justified, in the economic sector concerned, to maintain or create a market share for the goods or services protected by the trade mark.
The evidence provided (mostly invoices issued to customers in Spain) was deemed sufficient.
In respect of likelihood of confusion, the Court again reiterated the rules established by settled case law. This included the requirement that the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered.
In this case, it was held that the level of attention of the relevant public was lower than average due to the low-cost mass-consumption nature of the goods concerned.
The goods of both parties’ marks were generally found to be complementary or similar, taking on the one hand the baking ingredients of all kinds included in Class 29 of the application (candied fruits, glazed cherries, raisins, sultanas, candied orange peel and candied lemon peel) and industrial confectionery goods covered by Spanish trade mark No 2204987 on the other hand. The former are ingredients of the latter. The average consumer of this type of product will associate them and may believe that the same undertaking is responsible for the manufacture of all of those goods.
In contrast, there is no similarity between on the one hand frozen fruits and vegetables and on the other sauces or condiments. Those goods are sold in different departments or shops, and the former are generally barely processed.
Assessing the comparison of the signs, the court reiterated the need to carry out a global assessment of the likelihood of confusion, although in certain circumstances, one or more of the components of each marks can dominate.
Thus the word ‘castelló’ was viewed as the dominant element of the marks visually and verbally, the accent on the “o” not being sufficiently impactful. Conceptually, while ‘castello’ (no accent) means castle in Italian whereas ‘castelló’ is a Spanish surname, the difference was also regarded as too subtle to be perceived by the relevant public, particularly for the public in the EU who is neither Spanish nor Italian speaking.
Accordingly the Court held that there was a likelihood of confusion for all goods and services except for the frozen fruits and vegetables in class 29 in the Applicant’s Mark.