BETA | Decision 2705849 - Société des Produits Nestlé S.A. v. Investment Hub Gayrimenkul Yatırım Danışmanlık İnşaat Sanayi ve Ticaret Limited Şirketi
Date Published: Sep 28, 2017
OPPOSITION No B 2 705 849
Société des Produits Nestlé S.A., 1800 Vevey, Switzerland (opponent), represented by Harte-Bavendamm Rechtsanwalte Partnerschaftsgesellschaft mbB, Am Sandtorkai 77, 20457 Hamburg, Germany (professional representative)
a g a i n s t
Investment Hub Gayrimenkul Yatırım Danışmanlık İnşaat Sanayi ve Ticaret Limited Şirketi, Küçükçamlıca Cumhuriyet Mah. Libadiye Cad. No: 37 İç Kapı No: 3 Üsküdar, Istanbul, Turkey (applicant), represented by Franco Martegani S.R.L., Via Carlo Alberto, 41, 20052 Monza (MI), Italy (professional representative).
On 02/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 705 849 is upheld for all the contested goods, namely:
Class 31: Foodstuffs for animals
2. European Union trade mark application No 15 090 657 is rejected for all the contested goods. 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 of European Union trade mark application No 15 090 657, namely against some of the goods in Class 31. The opposition is based on United Kingdom trade mark registration No 291 436. 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 goods
The goods on which the opposition is based are the following:
Class 31: Foodstuffs for animals
The contested goods are the following:
Class 31: Foodstuffs for animals
Foodstuffs for animals are identically contained in both lists of goods.
- 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 are directed at the public at large. The degree of attention is average.
- The signs
BETA | |
Earlier trade mark | Contested sign |
The relevant territory is the United Kingdom.
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, ‘BETA’.
The contested sign is a figurative mark containing two elements, one above the other. The lower element consists of the verbal element ‘BETA’ in stylised letters with rounded edges. The lower parts of the letters are red and the upper parts are yellow. The upper element consists of Arabic letters. It can be assumed that these letters will be perceived as a figurative element by the majority of the British public, which is not able to read or understand Arabic.
Visually, the signs coincide entirely in their verbal elements, ‘BETA’ and differ in the stylisation and colours of this element in the contested sign. They also differ in the Arabic letters of the contested sign, which have no counterpart in the earlier mark. As explained above, it is likely that these Arabic letters will be perceived as a decorative figurative element.
As regards the contested sign, it is composed of a distinctive verbal element and a less distinctive figurative element of a purely decorative nature. Therefore, the verbal element is more distinctive than the figurative element.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘BETA’, present identically in both signs. The figurative elements of the contested mark will not be pronounced. In this context, it must be stated again that the majority of the target audience in the United Kingdom is not able to read or pronounce Arabic.
Therefore, the signs are aurally identical.
Conceptually, the public in the relevant territory will understand the distinctive word ‘BETA’ in both signs. Both signs contain the word ‘BETA’, which is defined as (1) ‘the second letter of the Greek alphabet’ and (2) ‘the second highest grade or mark, as in an examination’ (information extracted from Collins English Dictionary on 12/04/2017 at http://www.collinsdictionary.com/). The additional element of the contested mark, بيتا, does not convey any discernible concept for the average consumer, as the majority of the British public is not able to read or understand Arabic.
Therefore, the signs are conceptually identical.
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
Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, 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).
In the present case, the goods are identical. They target the public at large and the degree of attention is average. Furthermore, the earlier mark has a normal degree of distinctiveness.
The contested sign and the earlier mark have the word ‘BETA’ in common. However, the signs differ in the Arabic letters, the graphic elements and the colours of the contested sign. Therefore, as explained in section c), the signs are considered visually similar to an average degree, and aurally and conceptually identical.
The Opposition Division notes that the concept of likelihood of confusion includes the likelihood of association in the sense that, even if the relevant public does not immediately confuse the signs, it may still believe that the identical and similar goods come from the same undertaking or at least economically linked undertakings.
Considering all the above and taking into account 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), 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 United Kingdom trade mark registration No 291 436. It follows that the contested trade mark must be rejected for all the contested goods.
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
Dorothee SCHLIEPHAKE | Patricia LOPEZ FERNANDEZ DE CORRES | Marianna KONDAS |
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.