BALDI | Decision 1982340 - Aldi Einkauf GmbH & Co. oHG v. BALDI RETAIL LTD

Date Published: Oct 1, 2017

OPPOSITION No B 1 982 340

Aldi Einkauf GmbH & Co. oHG, Eckenbergstr. 16 A, 45307 Essen, Germany (opponent), represented by Schmidt, von der Osten & Huber Rechtsanwälte Steuerberater Partnerschaft mbB, Haumannplatz 28, 45130 Essen, Germany (professional representative)

a g a i n s t

Baldi Retail Ltd, 207 3rd Floor, Regent Street, London W1B 3HH, United Kingdom (applicant), represented by Shavarsh Petakchyan, 207 3rd Floor, Regent Street, London W1B 3HH, United Kingdom (employee representative).

On 21/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 1 982 340 is upheld for all the contested services, namely:

Class 35:        Advertising; business management; business administration; office functions; electronic data storage; organisation, operation and supervision of loyalty and incentive schemes; advertising services provided via the Internet; production of television and radio advertisements; accountancy; auctioneering; trade fairs; opinion polling.

Class 40:        Treatment of materials; development, duplicating and printing of photographs; generation of electricity.

Class 41:        Education; providing of training; entertainment; on-line entertainment; sporting and cultural activities; lottery services; electronic games services provided by means of the Internet; the provision of on-line electronic publications.

2.        European Union trade mark application No 10 386 795 is rejected for all the contested services. It may proceed for the remaining goods.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 10 386 795, namely against all the services in Classes 35, 40 and 41. The opposition is based on, inter alia, international trade mark registration No 870 896 designating the European Union. The opponent invoked Article 8(1)(b) EUTMR.

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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration No 870 896 designating the European Union.

1. The services

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

Class 35:        Advertising; business management; business administration; office functions; retailing in all product areas; online retailing in all product areas; operating supermarkets, retail outlets and discount retail outlets; advertising on the Internet, for others; providing information on the Internet, namely information about consumer products, consumer advice information and customer service information; arranging of commercial transactions for third parties, also on the Internet; arranging of contracts regarding the purchase and sale of goods as well as the providing of services for others, also via the Internet.

Class 38:        Telecommunications.

Class 40:        Treatment of materials; photographic laboratory services; making of photographic copies, also on the basis of digital data, development of films, duplicating of photographs; photograph processing services, in particular enlargement and retouching of digital photographs.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; providing of entertainment in the form of recorded music, recorded images and films.

Class 42:         Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; legal services; provision of storage space on the Internet; services of a database, namely collecting, saving, updating, forwarding and making available all kinds of data for third parties; arranging of all of the above mentioned services; operating and providing portals on the Internet; holding in readiness for electronic retrieval by third parties as well as electronic transmission of sound, images as well as other data and information of all kinds, in each case in particular via the Internet.

The contested services are the following:

Class 35:        Advertising; business management; business administration; office functions; electronic data storage; organisation, operation and supervision of loyalty and incentive schemes; advertising services provided via the Internet; production of television and radio advertisements; accountancy; auctioneering; trade fairs; opinion polling.

Class 40:        Treatment of materials; development, duplicating and printing of photographs; generation of electricity.

Class 41:        Education; providing of training; entertainment; on-line entertainment; sporting and cultural activities; lottery services; electronic games services provided by means of the Internet; the provision of on-line electronic publications.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 services in Class 35

Advertising; business management; business administration; office functions are identically contained in both lists of services.

The contested advertising services provided via the Internet; production of television and radio advertisements are included in the broad category of the opponent’s advertising. Therefore, they are identical.

Business management services are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc.

The contested accountancy is the measurement, processing and communication of financial information about economic entities, such as businesses and corporations. The contested accountancy is therefore included in the broad category of the opponent’s business management. Therefore, they are identical.

The contested electronic data storage is included in the broad category of the opponent’s office functions. Therefore, they are identical.

The contested opinion polling and the opponent’s business management are all business management services with similar natures and the purpose of providing tools, expertise and information to enable customers to carry out and improve their business, or providing businesses with the necessary support to develop, expand and acquire market share. Therefore, they are identical.

The contested trade fairs have some relevant points in common with the opponent’s advertising. They are both aimed at promoting the sale of a company’s products or services, and they may target the same undertakings, namely those seeking help with the promotion of their products or services. Therefore, these services are similar to a low degree.

The contested organisation, operation and supervision of loyalty and incentive schemes are similar to office functions. The services have the same purpose, in that they provide tools and expertise to enable their customers to perform their business or provide businesses with the necessary office support, such as collecting and storing client information, to develop, expand and acquire a greater market share. They have the same end users and are often provided by the same companies.

The contested auctioneering covers services rendered by specialised companies (auction agencies) that mediate the process of buying and selling goods or services, offering them up for bidding, taking bids and then selling the item to the highest bidder. There is a certain connection with the opponent’s retailing in all product areas, as such services can be offered by the same providers through the same commercial channels and can be of interest to the same user circles. They are similar to a low degree.

Contested services in Class 40

Treatment of materials is identically contained in both lists of services.

The contested development, duplicating and printing of photographs is included in the broad category of the opponent’s photographic laboratory services. Therefore, they are identical.

The contested generation of energy is a broadly defined category covering various types of services rendered to others to produce power from sources of primary energy. These services may be described as scientific services in the field of energy and, therefore, despite being in a different class of the Nice Classification, they are similar to a high degree to the contested scientific and technological services and research and design relating thereto in Class 42. These conflicting services have the same nature and purpose, method of use and end-users, and they have the same sales channels, given that all of them can be categorised as scientific or technological services, and, moreover, the wording of the contested services in Class 42 is sufficiently broad for all the services to be provided in relation to the field of energy.

Contested services in Class 41

Education; providing of training; entertainment; sporting and cultural activities are identically contained in both lists of services.

The contested on-line entertainment; electronic games services provided by means of the Internet; lottery services are included in the broad category of the opponent’s entertainment. Therefore, they are identical.

The contested providing on-line electronic publications is similar to the opponent’s education. Education is the process of facilitating learning, and educational methods include, for example, discussion, teaching and training. Online electronic publishing includes the digital publication of, for example, books and whole libraries. Education and training may therefore be provided using online publications. The contested services and the opponent’s services may therefore have the same providers, distribution channels and relevant public, and they may be complementary.

2. 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 services found to be identical or similar to different degrees are directed at both the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the services, the frequency of purchase and their price.

3. The signs

ALDI	BALDI
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 earlier mark is a word mark composed of the word ‘ALDI’ and the contested mark is also a word mark, composed of the word ‘BALDI’.

As both signs are word marks and composed only of one word, which has no meaning for the relevant public, there are no dominant or more distinctive elements.

Visually, the signs are similar to the extent that the earlier mark, ‘ALDI’, is fully included within the contested mark. The marks differ in the first letter, ‘B’, of the contested mark.

Therefore, the signs are visually highly similar.

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 ‘ALDI’, present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the letter ‛B’ of the contested mark, which has no counterpart in the earlier sign.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As neither of the signs has a meaning for the public in the relevant territory, a conceptual comparison is not possible; therefore, 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.

4. 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 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.

5. Global assessment, other arguments and conclusion

The contested services are partly identical and partly similar to different degrees to the opponent’s services.

The marks differ only in the first letter, ‘B’, of the contested sign; other than that, they are identical. This results in a higher than average degree of aural and visual similarity. As stated above, the signs are meaningless and therefore conceptually neutral.

The presence of the additional letter at the beginning of the contested mark does not rule out a conclusion that the marks at issue are visually and aurally highly similar. In this respect, as a general rule, for relatively short marks the central elements are as important as the elements at the beginning and end of the sign (20/04/2005, T-273/02, Calpico, EU:T:2005:134, § 39).

Moreover, account is taken of the fact that 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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 870 896 designating the European Union. It follows that the contested trade mark must be rejected for all the contested services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use/reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As earlier international trade mark registration No 870 896 designating the European Union leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Francesca DINU

Cristina CRESPO MOLTO

Janja FELC

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.