Bella Pitahaya Rosada | Decision 2708975
Date Published: Oct 1, 2017
OPPOSITION No B 2 708 975
Bella Bulgaria AD, 101, ‘Tsarigradsko shose’ Blvd., floor 8, 1113 Sofia, Bulgaria (opponent), represented by Kostadin Manev, 73, Patriarh Evtimii Blvd., fl.1, 1463 Sofia, Bulgaria (professional representative)
a g a i n s t
Sumesa S.A., Miguel H. Alcivar y Victor Hugo Sicouret, Edif. Torres del Norte, Guayaquil, Ecuador (applicant), represented by Juan Carlos Vicente Ochoa Blanco-Recio, Cerro del Espino 12, 28221 Majadahonda (Madrid), Spain (professional representative).
On 10/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 708 975 is upheld for all the contested goods.
2. European Union trade mark application No 15 038 946 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 15 038 946. The opposition is based on, inter alia, Bulgarian trade mark registration No 80 344. 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 Bulgarian trade mark registration No 80 344.
- The goods
The goods on which the opposition is based are the following:
Class 29: Fish; preserved, dried and cooked fruits and vegetables; jellies, jams and compotes; eggs, milk and milk products; edible oils and fats; oil for food; margarine; frozen vegetables.
Class 31: Agricultural, horticultural and forestry products and grains not included in other classes; live animals; live plants and flowers; feed; malt.
Class 32: Beer; soft drinks; fruit drinks and juices; syrups and other preparations for making beverages.
The contested goods (after a limitation requested by the applicant) are the following:
Class 29: Processed fruits, fungi and vegetables (including nuts and pulses); oils and fats; birds eggs and egg products; fish, seafood and molluscs; dairy products and dairy substitutes.
Class 31: Agricultural and aquacultural crops and horticulture products, other than those of botanical genus Brassica, Delphinium, Hordeum, Medinilla or Solanum, and not being or containing material for vegetative propagation of the botanical genus Brassica, Delphinium, Hordeum, Medinilla or Solanum; foodstuffs and fodder for animals; forestry products; live animals, organisms for breeding; products for animal litter.
Class 32: Beer and brewery products; Preparations for making beverages.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘including’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
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
Oils and fats; fish and dairy products are identically contained in both lists of goods (including synonyms).
The contested seafood and molluscs are included in or overlap with the opponent’s fish. Therefore, these goods are considered identical.
The contested dairy substitutes overlap with the opponent’s milk. Therefore, they are considered identical.
The contested birds eggs and egg products are included in or overlap with the opponent’s eggs. The term ‘egg products’ refers to eggs that are removed from their shells for processing (i.e. dried, frozen, refrigerated liquid egg products, etc.). All of these products are pasteurised. Examples of egg products include, for instance, frozen chopped hard-boiled and peeled eggs, frozen quiche mixes and refrigerated liquid or frozen egg substitutes. Therefore, these goods are considered identical.
The contested processed fruits and vegetables (including nuts and pulses) include, as a broader category, the opponent’s preserved, dried and cooked fruits and vegetables. 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 processed fungi are processed mushrooms and considered similar to the opponent’s preserved vegetables. These goods have the same nature, producers, distribution channels and target public.
Contested goods in Class 31
Live animals; forestry products are identically contained in both lists of goods.
The contested agricultural crops and horticulture products, other than those of botanical genus Brassica, Delphinium, Hordeum, Medinilla or Solanum, and not being or containing material for vegetative propagation of the botanical genus Brassica, Delphinium, Hordeum, Medinilla or Solanum are included in the opponent’s agricultural, horticultural and forestry products and grains not included in other classes. Therefore, these goods are considered identical.
The contested aquacultural crops, other than those of botanical genus Brassica, Delphinium, Hordeum, Medinilla or Solanum, and not being or containing material for vegetative propagation of the botanical genus Brassica, Delphinium, Hordeum, Medinilla or Solanum overlap with the opponent’s agricultural, horticultural and forestry products and grains not included in other classes. Therefore, these goods are considered identical.
The contested organisms for breeding are included in or overlap with the opponent’s live animals. Therefore, these goods are identical.
The contested foodstuffs and fodder for animals are identical to the opponent’s feed. This is either because they are synonymous or because the contested specific animal foods are included in the broad category of the opponent’s feed.
The contested products for animal litter are included in the broad category of the opponent’s forestry products. Sawdust made from trees is an example of a forestry product. Therefore, they are identical.
Contested goods in Class 32
Beer; preparations for making beverages are identically contained in both lists of goods.
The contested brewery products are included in or overlap with the opponent’s beer. Therefore, these goods are considered identical.
- 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 are directed at the public at large. It is considered that the relevant public’s degree of attention at the moment of choosing the goods is, on the whole, average. Nevertheless, as some of the foodstuffs in question can be inexpensive goods that are purchased on a daily basis (e.g. eggs), the habitual buying behaviour associated with those goods may result in a lower than average degree of attention.
- The signs
Earlier trade mark | Contested sign |
The relevant territory is Bulgaria.
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 figurative mark containing the verbal element ‘BELLA’, which is written in red upper case letters with a thin white outline, below which is a red curved line with a thin white line below it. The word ‘BELLA’ is written in a rather standard typeface. All these elements are placed against a blue label with light blue bands at the top and bottom. The word ‘BELLA’ will be understood by a part of the relevant public as a female first name, although it is not very common in Bulgaria. The rest of the relevant public will perceive it as an invented word. In either case, the distinctiveness of this element is normal, since it has no meaning in relation to the goods at issue.
The contested mark is a figurative mark containing three word elements, namely ‘BELLA’, ‘PITAHAYA’ and ‘ROSADA’, in title case. The last two verbal elements are placed below the word ‘BELLA’. The word ‘BELLA’ is in slightly stylised dark pink letters, and by contrast the words ‘PITAHAYA’ and ‘ROSADA’ are in rather standard green letters. In addition, there is a leaf-like figurative element attached to the last letter of the word ‘BELLA’. For part of the public, this figurative element could allude to a characteristic of some of the goods, for instance processed fruits and vegetables, and agricultural crops and horticulture products. This element could inform the relevant public that the goods are fresh. With regard to the meaning of the word ‘BELLA’, the explanation given above applies. The verbal elements ‘PITAHAYA’ and ‘ROSADA’ are meaningless and therefore these words have a normal degree of distinctiveness.
The figurative elements of both signs are essentially decorative (including the abovementioned leaf-like figurative element) and, therefore, are less distinctive than the verbal elements.
In both marks, the word ‘BELLA’ could be considered more dominant (visually eye-catching) than the other elements. In the earlier mark, it is the only word and is placed centrally against the background, and in the contested sign the word ‘BELLA’ is much larger than the other two words.
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).
In addition, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.
Visually, the signs coincide in the verbal element ‘BELLA’, which is distinctive. They differ in all their figurative elements, which are, however, of limited distinctiveness, and in the words ‘PITAHAYA’ and ‘ROSADA’, which are of normal distinctiveness. Moreover, the word ‘BELLA’, as explained above, is much larger than these two other words, which are placed below the sign’s first word, ‘BELLA’.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the verbal element ‘BELLA’, present identically in both signs. As ‘LL’ is very uncommon in Bulgarian, the public will tend to pronounce it as a single ‘L’. This element is, as explained above, distinctive. The pronunciation differs in the verbal elements ‘PITAHAYA’ and ‘ROSADA’ of the contested mark, which have no counterparts in the earlier mark. Taking into account all the words, including the abovementioned elements ‘PITAHAYA’ and ‘ROSADA’, the signs will be pronounced as ‘BE/LLA’ and ‘BE/LLA/PI/TA/HA/YA/RO/SA/DA’; although the trade marks are written in the Latin alphabet, Bulgarian consumers will pronounce them as indicated above.
Therefore, the signs are aurally similar to an average degree.
Conceptually, as the verbal element ‘BELLA’, contained in both signs, will be perceived by part of the public as a female name, the signs are conceptually highly similar for that part of the public. For the part of the relevant public that does not understand ‘BELLA’, ‘PITAHAYA’ or ‘ROSADA’, a conceptual comparison is not possible and 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 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
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 covered are from the same or economically linked undertakings.
Whether or not likelihood of confusion exists depends on a global assessment of the below interdependent factors. These factors include the similarity between the goods (which are in this case either identical or similar); the similarity between the signs (which are in this case visually and aurally similar to an average degree, and, for a part of the public, also conceptually highly similar, since the word ‘BELLA’ may be perceived as a female name); the degree of distinctiveness of the earlier sign (which in this case is average); the distinctiveness of the coinciding elements (in this case, both signs contain the distinctive element ‘BELLA’); and the degree of attention of the relevant public (which in this case is average in relation to most of the goods and lower than average in relation to some of the goods). In particular, a lesser degree of similarity between goods and 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).
A significant part of the relevant public, when encountering identical or similar goods under the marks in question, given that the marks coincide in the unusual first name or fanciful verbal element ‘BELLA’, is likely to believe that the goods come from the same undertaking or from economically linked undertakings. Indeed, consumers could perceive the contested sign as identifying a particular range of the opponent’s goods. This applies despite the presence of the words ‘PITAHAYA’ and ‘ROSADA’ in the contested sign, as they are much smaller and therefore less striking than the distinctive and dominant word ‘BELLA’. Furthermore, the word ‘BELLA’ is the first verbal element in the contested sign and will therefore attract the attention of the consumer. The Opposition Division takes into account the facts that the goods are mostly identical (only one of the goods is similar, that is, processed fungi), that the signs are similar to at least an average degree and that the degree of attention of the relevant public will be no higher than average.
The graphic depictions of the signs are not sufficient to outweigh the similarities arising from the coinciding distinctive element ‘BELLA’, since they are purely decorative and of limited distinctiveness, and since the coinciding element plays an independent distinctive role in both signs.
Furthermore, 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).
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 Bulgarian trade mark registration No 80 344. It follows that the contested trade mark must be rejected for all the contested goods.
As earlier Bulgarian trade mark No 80 344 ‘BELLA’ leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights 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.
Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Irina SOTIROVA | Michal KRUK | Plamen IVANOV |
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.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.