In Case T-454/11, Luna International Ltd (UK) registered the following trademark (represented left) for goods in classes 39, 30, 31, 32.

Asteris Industrial and Commercial Company SA (‘Asteris’) (Greece) brought an invalidity action on the basis of earlier Greek mark registered in 2000 for goods in Class 29 and the grounds of articles 8 (1) b) and (5) CTMR . The reputation of the earlier mark was relied on for part of the goods covered by its registration, namely ‘Tomato paste and tomato products’ in Class 29.

The Cancellation Division granted partly the action, namely for ‘preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; edible oils and fats’ in Class 29; ‘salt, mustard; vinegars, sauces (condiments); spices’ in Class 30; ‘fresh fruits and vegetables’ in Class 31; and ‘fruit drinks and fruit juices’ in Class 32.

Luna Int’l Ltd lodged an appeal with OHIM against the decision of the Cancellation Division, disputing the proof of use of the earlier mark and the similarity of the trade marks at issue. On OHIM’s request, Asteris produced further evidence of use.

As regards proof of genuine use of the earlier mark, the Board of Appeal observed that Asteris had failed to furnish proof that the earlier mark had been used as actually registered (i.e.: the documents only reproduced the ALBUSTAN or AL BUSTAN brand without the figurative elements). However, it concluded that the form of use of the earlier trade mark did not alter the distinctive character of the mark registered. As regards the time of use, taking into account the dates appearing on the invoices and other documents showing the earlier mark, together with the undated images of the earlier mark, Asteris had proved that the earlier mark had been used in a form which did not alter its distinctive character during the relevant period. With regard to the place of use, the earlier mark had been used in connection with ‘tomato paste’, which had been mainly exported from Greece to Arabic countries, and, as affixing the earlier mark to the goods or their packaging constitutes use of this mark, the mark had been put to genuine use in the relevant territory. As regards the extent of use the evidence of use, containing figures relating to the quantity of goods showed genuine use of the earlier mark for ‘tomato paste’. The BoA concluded that genuine use of the earlier mark had been proven for ‘tomato paste of various concentrations and packages, in cans; peeled tomatoes, in cans; various tomato products (tomato juice, concasse, pumarro, etc.) in cans; fruit juices, in cans’, but not for ‘preserved fruits, in cans’, in Class 29.

As regards the likelihood of confusion, considering that: (i) the fruits and vegetables in various forms, jellies, jams, compotes and sauces (condiments) covered by the mark at issue and the various tomato products in cans covered by the earlier mark were identical or similar; (ii) the other goods covered by the mark at issue, namely, edible oils and fats, salt, mustard, vinegars, spices, and the goods covered by the earlier mark were similar to a low degree; and (iii) the trade marks at issue were similar to a medium degree, the Board of Appeal concluded that there was a likelihood of confusion within the meaning of Article 8(1)(b) of CTMR for all the goods in respect of which the Cancellation Division had granted the application for a declaration of invalidity.