ACOR | Decision 2544610 - SOCIEDAD COOPERATIVA GENERAL AGROPECUARIA ACOR v. Wojciech Furmann Firma Handlowa ACOR
Date Published: Oct 2, 2017
OPPOSITION No B 2 544 610
Sociedad Cooperativa General Agropecuaria Acor, Pº de Isabel La Catolica, 1, 47001 Valladolid, Spain (opponent), represented by IPAMARK S.L., Paseo de la Castellana, 72-1º, 28046 Madrid, Spain (professional representative)
a g a i n s t
Wojciech Furmann Firma Handlowa ACOR, Rawicka 43, 63700 Krotoszyn, Poland (applicant), represented by Kancelaria Patentowa A.J. Gołębniakowie, ul. Partyzancka 7, 61-495 Poznań, Poland (professional representative).
On 22/06/2017, the Opposition Division takes the following
DECISION:
- Opposition No B 2 544 610 is partly upheld, namely for the following contested goods in Classes 29, 30 and 31:
Class 29: Meat, Fish, Poultry, Game, Meat extracts; game products.
Class 30: Ices; Vegetable concentrates used for seasoning; Meat tenderisers for household purposes; Spices; Peppers (plants); Greens being spices; Food flavourings, other than essential oils; Preparations for improving the taste qualities of foodstuffs; Salt, Vinegar; Salts for preserving foodstuffs; Sauces; Sauces (condiments), meat gravies, soya sauce.
Class 31: Foodstuffs for animals; natural seeds, sunflower seeds; pumpkin seeds; malt; horticultural products; natural plants; fresh fruits and vegetables, except beet; nuts (fruits); unprocessed grains.
2. European Union trade mark application No 13 855 176 is rejected for all the above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 13 855 176 (figurative mark:
“”), namely against all the goods in Classes 29, 30 and 31. The opposition is based on the following earlier trade marks:
- European Union trade mark registration No 3 245 231 (figurative mark:
“”); - European Union trade mark registration No 3 245 487 (figurative mark:
“”); - European Union trade mark registration No 10 840 007 (figurative mark:
“”); - Spanish trade mark registration No 1 290 895 (figurative mark:
“”); - Spanish trade mark registration No 1 290 896 (figurative mark:
“”); - Spanish trade mark registration No 2 583 149 (figurative mark:
“”); - Spanish trade mark registration No 2 813 967 (figurative mark:
“”).
The opponent invoked Article 8(1)(b) EUTMR.
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), 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 some of the trade marks on which the opposition is based, namely European Union trade mark registrations No 3 245 231 and No 3 245 487 and all the Spanish trade marks listed above.
The request was filed in due time and is admissible as the earlier trade marks were registered more than five years prior to the relevant date mentioned above.
On 02/06/2016, the opponent was given two months to file the requested proof of use. The time limit was extended until 14/10/2016 (see the Office’s letter of 28/07/2016).
The opponent did not submit any evidence concerning the use of the earlier trade marks on which, inter alia, the opposition is based (see the Office’s letter of 20/10/2016). It did not argue that there were proper reasons for non-use either.
According to Rule 22(2) EUTMIR, if the opposing party does not provide such proof before the time limit expires, the Office will reject the opposition.
Therefore, the opposition must be rejected pursuant to Article 42(2) and (3) EUTMR and Rule 22(2) EUTMIR.
The examination of the opposition continues on the basis of the remaining earlier European Union trade mark registration, No 10 840 007 (figurative mark: ).
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.
- The goods and services
The goods and services in Classes 4, 29, 30, 31, 35, 40 and 42 on which the opposition is based are the following:
Class 4: Industrial oils and greases; Lubricants; Dust absorbing, wetting and binding compositions; Fuels (including motor spirit) and illuminants; Candles and wicks for lighting; Biofuels (biodiesel, biomass); Electrical energy.
Class 29: Meat, fish, poultry and game; Meat extracts; eggs.
Class 30: Ice.
Class 31: Live animals; flowers, foodstuffs for animals, malt for brewing and distilling.
Class 35: Advertising, marketing and advertising promotion relating to agricultural products and agri-foodstuffs; Import-export.
Class 40: Recycling of waste and rubbish; Transformation and treatment of waste using mechanical and chemical processes and the classification thereof, mechanical and chemical transformation or treatment of all kinds of fluids; Treatment of water, production of energy.
Class 42: Laboratory analysis, research, development and innovation in the cultivation of agricultural products and agri-foodstuffs.
The contested goods in Classes 29, 30 and 31 are the following:
Class 29: Meat, Fish, Poultry, Game and game products; Gelatine for food; Meat extracts; Animal and vegetable albumin, concentrates, hydrolysates and isolates of animal and vegetable albumin, namely albumen for culinary purposes; Bouillon concentrates; Soups and Powdered soup stock; Bouillon (Preparations for making -); dairy; Animal and vegetable fats; Dried, boiled and preserved fruits and vegetables; Nuts and dried fruit, Coconut, desiccated, Soya beans, preserved, for food.
Class 30: Coffee, Tea, Cocoa, Artificial coffee; Confectionery, chocolate; Starch products for food, Starch for food; Potato flour; Sausage binding materials; Flour and preparations made from cereals, Pastry and confectionery; Beans, Soy flour, Flaxseed for human consumption; Ices, binding agents for edible ices; Vegetable concentrates used for seasoning; Salt, Vinegar, Sauces; Salts for preserving foodstuffs; Sauces (condiments), meat gravies, soya sauce; Meat tenderisers for household purposes; Spices; Peppers (plants); Greens being spices; Food flavourings, other than essential oils; Preparations for improving the taste qualities of foodstuffs; Turmeric; Herbs (preserved).
Class 31: Agricultural products, except beet, horticultural and forestry products, unprocessed grains, fresh fruits and vegetables, except beet, natural seeds and plants, nuts (fruits), almonds, sunflower seeds, sesame, pumpkin seeds, foodstuffs for animals, malt.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.
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.
Contested goods in Class 29
Meat, Fish, Poultry, Game, Meat extracts are identically contained in both lists of goods.
The contested game products have the same purpose, distribution channels, public and producers as the opponent´s games. Furthermore, they are in competition with each other. Therefore, they are similar.
The remaining contested Gelatine for food; Animal and vegetable albumin, concentrates, hydrolysates and isolates of animal and vegetable albumin, namely albumen for culinary purposes; Bouillon concentrates; Soups and Powdered soup stock; Bouillon (Preparations for making -); dairy; Animal and vegetable fats; Dried, boiled and preserved fruits and vegetables; Nuts and dried fruit; Coconut, desiccated, Soya beans, preserved, for food have different natures from the opponent’s goods and services. Furthermore, they are neither complementary to nor in competition with each other. Their distribution channels and methods of use are also different. Consumers would not think that these contested goods and the opponent’s goods and services came from the same undertaking or economically linked undertakings. The fact that they are all related to food in some way is not sufficient to make them similar. Therefore, they are dissimilar.
Contested goods in Class 30
Ices are identically contained in both lists of goods.
The contested Vegetable concentrates used for seasoning; Meat tenderisers for household purposes; Spices; Peppers (plants); Greens being spices; Food flavourings, other than essential oils; Preparations for improving the taste qualities of foodstuffs have the same purpose, distribution channels, public and producers as the opponent´s Meat extracts. Furthermore, they are in competition with each other. Therefore, they are similar.
The contested Salt, Vinegar; Salts for preserving foodstuffs have the same purpose, distribution channels and public as the opponent´s Meat extracts. Therefore, they are similar to a low degree.
The contested Sauces; Sauces (condiments), meat gravies, soya sauce have the same purpose, distribution channels, public and producers as the opponent´s Meat extracts. Therefore, they are similar to a low degree.
The remaining contested Coffee, Tea, Cocoa, Artificial coffee; Confectionery, chocolate; Starch products for food, Starch for food; Potato flour; Sausage binding materials; Flour and preparations made from cereals, Pastry and confectionery; Beans, Soy flour, Flaxseed for human consumption; binding agents for edible ices; Turmeric; Herbs (preserved) have different natures from the opponent’s goods and services. Furthermore, they are neither complementary to nor in competition with each other. Their distribution channels and methods of use are also different. Consumers would not think that these contested goods and the opponent’s goods and services came from the same undertaking or economically linked undertakings. The fact that they are all related to food in some way is not sufficient to make them similar. Therefore, they are dissimilar.
Contested goods in Class 31
Foodstuffs for animals are identically contained in both lists of goods.
The contested natural seeds, sunflower seeds; pumpkin seeds overlap with the opponent’s foodstuffs for animals. Therefore, they are identical.
The contested malt includes, as a broader category, the opponent’s malt for brewing and distilling. 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 horticultural products; natural plants include, as broader categories, the opponent’s flowers. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.
The contested fresh fruits and vegetables, except beet; nuts (fruits) have the same distribution channels, public and producers as the opponent´s flowers. Therefore, they are similar.
The contested unprocessed grains have the same distribution channels and public as the opponent´s flowers. Therefore, they are similar to a low degree.
The remaining Agricultural products, except beet, forestry products, almonds, sesame have different natures from the opponent’s goods and services. Furthermore, they are neither complementary to nor in competition with each other. Their distribution channels and methods of use are also different. Consumers would not think that these contested goods and the opponent’s goods and services came from the same undertaking or economically linked undertakings. The fact that they are all related to food in some way is not sufficient to make them similar. Therefore, they are dissimilar.
As a result, the following contested goods are identical or similar to different degrees to the opponent’s goods:
Class 29: Meat, Fish, Poultry, Game, Meat extracts; game products.
Class 30: Ices; Vegetable concentrates used for seasoning; Meat tenderisers for household purposes; Spices; Peppers (plants); Greens being spices; Food flavourings, other than essential oils; Preparations for improving the taste qualities of foodstuffs; Salt, Vinegar; Salts for preserving foodstuffs; Sauces; Sauces (condiments), meat gravies, soya sauce.
Class 31: Foodstuffs for animals; natural seeds, sunflower seeds; pumpkin seeds; malt; horticultural products; natural plants; fresh fruits and vegetables, except beet; nuts (fruits); unprocessed grains.
- 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 similar to different degrees are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention is between average and low, because they are cheap goods for daily consumption.
Given that the general public is more prone to confusion, the examination will proceed on this basis.
- 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).
Both signs are figurative marks. The earlier trade mark, ‘acor’, is written in blue in a special typeface. Between the letters ‘a’ and ‘c’, there is a curved line. The contested sign has a blue triangle and a yellow circle to the left of the verbal element. A thick yellow line extends from the yellow circle, underlining the verbal element, which is the word ‘ACOR’, written in red upper case letters.
The coinciding word element has no meanings for the relevant public and is, therefore, distinctive.
Neither of the signs has any element that could be considered clearly more dominant than other elements.
When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T 312/03, Selenium-Ace, EU:T:2005:289, § 37).
Visually, the signs have the word ‘acor’ in common, albeit differently stylised. The different graphic depictions (see above) cannot prevent the conclusion that the signs are visually similar to a higher than average degree.
Aurally, figurative elements will not be taken into account. The signs will be pronounced identically as ‘acor’. Therefore, the marks are aurally identical.
Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular a similarity between the marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or services may be offset by a greater degree of similarity between the marks, and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17; and 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).
For the purpose of the global appreciation, the average consumer of the category of goods or services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. The consumer’s degree of attention is likely to vary according to the category of goods or services in question, and average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; and 30/06/2004, T-186/02, Dieselit, EU:C:2011:238, § 38).
The contested goods are partly identical, partly similar to different degrees and partly dissimilar. The signs are visually similar to a higher than average degree and aurally identical.
According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since some of the goods are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.
Taking into account the higher than average degree of visual similarity and the aural identity between the signs, the average degree of distinctiveness of the earlier trade mark, the not more than average degree of attention of the consumers and the identity or similarity between the goods and services, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and, therefore, the opposition is upheld. There is an even greater likelihood of confusion when the degree of attention of the consumers is only low. The conclusion reached applies also to the goods that are similar only to a low degree, because of the clear aural identity and visual similarity between the signs.
Contrary to the applicant’s argument, the differences between the signs are not sufficient to distinguish them clearly from each other. The consumer could easily think that they came from the same undertaking or economically linked undertakings.
Therefore, the opposition is partly well founded under Article 8(1)(b) EUTMR.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.
Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
Magnus ABRAMSSON | Peter QUAY | Claudia MARTINI |
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.