CUCINA BIOLOGICA | Decision 2710500
Date Published: Sep 25, 2017
OPPOSITION No B 2 710 500
Aldi GmbH & Co. KG, Burgstr. 37, 45476 Mülheim/Ruhr, 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
EcorNaturaSì S.p.A., Via de Besi 20/C, 37139 Verona, Italy (applicant), represented by Con Lor S.p.A., Via Amatore Sciesa, 9, 37122 Verona, Italy (professional representative).
On 05/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 710 500 is partially upheld, namely for the following contested goods and services:
Class 29: Meat; Fish; Poultry; Game; Meat extracts; Preserved fruits; Vegetable preserves; Processed fruits, fungi and vegetables (including nuts and pulses); Frozen fruits; Frozen vegetables; Vegetables, cooked; Fruit, stewed; Jellies, jams, compotes, fruit and vegetable spreads; Jellies; Marmalade; Birds eggs and egg products; Milk; Milk products; Edible oils; Olive oil; Oils and fats; Dishes of fish; Prepared meat dishes; Prepared meals containing [principally] eggs; Vegetable-based entrees; including all of the aforesaid goods of organic and biodynamic origin.
Class 30: Coffee; Artificial coffee; Rice; Tapioca; Sago; Cereals; Bread; Sponge cake; Sweetmeats [candy]; Edible ices; Sugar; Honey; Syrups and treacles; Yeast; Salt; Mustard; Vinegar; Herb-sauces; Spices; Ice; Ready-made dishes containing pasta; Prepared rice dishes; Prepared pizza meals; including all of the aforesaid goods of organic and biodynamic origin; Tea; Cocoa; Farina [meal]; Baking powder.
Class 31: Horticultural products not included in other classes; Live animals; Fruit, nuts, fresh vegetables; Seeds; Natural plants; Flowers; Foodstuffs and fodder for animals; Malt; including all of the aforesaid goods of organic and biodynamic origin; Grains [cereals]; Agricultural produce (Unprocessed -); Trees and forestry products.
Class 32: Beers; Mineral water [beverages]; Aerated water; Non-alcoholic beverages; Fruit squashes; Fruit-based beverages; Juices; Syrups for beverages; Preparations for making beverages; including all of the aforesaid goods of organic and biodynamic origin.
Class 33: Alcoholic beverages (except beer); Wine; Spirits and liquors; including all of the aforesaid goods of organic and biodynamic origin.
Class 35: Retail services relating to food; Wholesaling of foodstuffs; Retailing in relation to beverages; Wholesaling in relation to beverages.
Class 43: Serving food and drinks; Take-out restaurant services; Take-away fast food services; Bar services; Delicatessens (restaurants); Providing food and drink in restaurants and bars.
2. European Union trade mark application No 15 150 097 is rejected for all the above goods and services. It may proceed for the remaining services, namely:
Class 35: Advertising; Business management; Business administration; Office functions; Services provided by a franchiser, Namely commercial management and development assistance; Publication of publicity texts; Import-export agencies (services, for others, including in relation to the organic and biodynamic sectors); Organisation of trade fairs for commercial or advertising purposes; Restaurant management; Restaurant management for others.
Class 43: Temporary accommodation.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 150 097. The opposition is based on German trade mark registration No 302 015 030 044. 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 and services
The goods on which the opposition is based are the following:
Class 29: Meat; fish; poultry; game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies; jams; compotes; eggs; milk; milk products; edible oils; fats; Ajvar [preserved peppers]; Albumin milk; Seaweed extracts for food; Alginates for culinary purposes; Non-alcoholic eggnog; Apple purée; Oysters [not live]; Black pudding; Beans [preserved]; Bouillon; Fat-containing mixtures for bread slices; Butter; Buttercream; Dates; Curd; Yolk of eggs; Powdered eggs; Albumen for culinary purposes; White of eggs; Peas [preserved]; Peanut butter; Peanuts [prepared]; Gherkins; Low-fat potato chips; Fatty substances for the manufacture of edible fats; Salted fish; Fish, preserved; Fish [not live]; Fish filets; Foods made from fish; Fish, tinned [canned]; Isinglass for food; Fish meal for human consumption; Fish mousses; Fish roe, prepared; Meat, preserved; Bouillon concentrates; Meat jellies; Canned meat; Salted meats; Fruit chips; Fruit preserved in alcohol; Fruit jellies; Fruit pulp; Fruit-based snack food; Jellies for food; Prawns [not live]; Poultry [not live]; Gelatine; Vegetables [cooked]; Vegetables [dried]; Vegetables [preserved]; Vegetables, tinned [canned]; Vegetable mousses; Vegetable salads; Toasted laver; Herrings [not live]; Lobsters [not live]; Ginger jam; Yogurt; Vegetable soup preparations; Cocoa butter; Tripe; Crystallized fruits; Potato chips; Potato flakes; Potato fritters; Cheese; Caviar; Kephir [milk beverage]; Hummus [chickpea paste]; Kimchi [fermented vegetable dish]; Animal marrow for food; Bone oil, edible; Coconut butter; Coconut fat; Coconut [desiccated]; Coconut oil; Evaporated milk; Preserved garlic; Soups; Crayfish [not live]; Croquettes; Crustaceans [not live]; Kumys [kumyss] [milk beverage]; Rennet; Salmon [not live]; Spiny lobsters [not live]; Liver; Liver pâté; Linseed oil for culinary purposes; Lecithin for culinary purposes; Lentils [preserved]; Corn oil; Almonds [ground]; Margarine; Marmalade; Milk ferments for culinary purposes; Milk beverages, milk predominating; Milk shakes; Whey; Clams [shellfish] [not live]; Nuts [prepared]; Cooked fruits; Fruit, preserved; Frozen fruits; Fruits, tinned [canned]; Fruit salads; Edible oils; Olives, preserved; Olive oil for food; Palm kernel oil for food; Palm oil for food; Pectin for culinary purposes; Vegetable juices for cooking; Piccalilli; Pickles; Mushrooms, preserved; Pollen prepared as foodstuff; Cranberry sauce [compote]; Prostokvasha [soured milk]; Colza oil for food; Ryazhenka [fermented baked milk]; Raisins; Cream [dairy products]; Seeds, prepared; Anchovy; Sardines, not live; Sauerkraut; Fruit peel; Shellfish, not live; Ham; Whipped cream; Snail eggs for consumption; Pork; Lard; Sea-cucumbers, not live; Silkworm chrysalis, for human consumption; Sesame oil; Tahini [sesame seed paste]; Shrimps, not live; Smetana [sour cream]; Soya beans, preserved, for food; Soya milk [milk substitute]; Sunflower seeds, prepared; Sunflower oil for food; Bacon; Suet for food; Preparations for making soup; Tuna, not live; Tofu; Tomato purée; Tomato juice for cooking; Truffles, preserved; Clams, not live; Aloe vera prepared for human consumption; Edible birds’ nests; Game, not live; Sausages; Sausages in batter; Meats; Preparations for making bouillon; Onions, preserved.
Class 30: Coffee; Tea; Cocoa; Artificial coffee; Rice; Tapioca; Sago; Flour; Cereal preparations; Bread; Pastries; Confectionery; Ices; Sugar; Honey; Syrups and treacles; Yeast; Baking powder; Salt; Mustard; Vinegar; Sauces [condiments]; Spices; Ice; Seaweed [condiment]; Aniseed; Flavorings [flavourings], other than essential oils, for beverages; Food flavorings, other than essential oils; Wheat flour; Flavorings [flavourings], other than essential oils, for cakes; Pastries; Beer vinegar; Thickening agents for cooking foodstuffs; Binding agents for ice cream [edible ices] Bean meal; Sweetmeats [candy]; Buns; Unleavened bread; Sandwiches; Petit-beurre biscuits; Cheeseburgers [sandwiches]; Chow-chow [condiment]; Chutneys [condiments]; Couscous [semolina]; Curry [spice] Custard; Dessert mousses [confectionery]; Ice cream; Iced tea; Peanut confectionery; Essences for foodstuffs, except etheric essences and essential oils; Vermicelli [noodles]; Meat tenderizers, for household purposes; Meat pies; Meat gravies; Fondants [confectionery]; Fruit coulis [sauces]; Spring rolls; Royal jelly; Fruit jellies [confectionery]; Hominy; Husked barley; Barley meal; Crushed barley; Tea-based beverages; Chips [cereal products]; Cereal bars; Cereal-based snack food; Condiments; Cloves [spice]; Glucose for culinary purposes; Gluten additives for culinary purposes; Semolina; Groats for human food Crushed oats; Oat flakes; Oatmeal; Husked oats; Halvah; Ginger [spice]; Frozen yogurt [confectionery ices]; Artificial coffee; Vegetal preparations for use as coffee substitutes; Coffee flavorings [flavourings]; Coffee-based beverages Cocoa-based beverages Candy; Capers; Caramels [candy]; Potato flour; Chewing gum; Cookies; Catsup; Cooking salt; Salt for preserving foodstuffs; Crackers; Infusions, not medicinal; Cakes; Cake frosting [icing]; Garden herbs, preserved [seasonings]; Cake powder; Cake dough; Turmeric Liquorice [confectionery]; Stick liquorice [confectionery]; Linseed for human consumption; Corn, milled; Corn, roasted; Corn flakes; Hominy grits; Corn flour; Macaroni; Macaroons [pastry]; Maltose; Malt for human consumption; Malt biscuits; Malt extract for food; Almond confectionery; Marinades; Marzipan; Almond paste; Mayonnaise; Sea water for cooking; Farinaceous foods; Syrups and treacles; Gruel, with a milk base, for food; Coffee beverages with milk; Cocoa beverages with milk; Ham glaze; Mill products; Nutmegs; Muesli; Oatbased food Noodle-based prepared meals; Noodles; Palm sugar; Breadcrumbs; Pasta sauce; Pâtés en croûte; Pies; Pastilles [confectionery]; Pesto [sauce] Petits fours [cakes]; Pancakes; Pepper; Gingerbread; Mint for confectionery; Peppermint candy Peppers [seasonings]; Pizzas; Bee glue; High-protein cereal bars; Puddings; Popcorn; Quiches; Ravioli; Rice cakes; Rice-based snack food; Relish [condiment]; Ice, natural or artificial; Unroasted coffee; Saffron [seasoning]; Preparations for stiffening whipped cream; Dressings for salad; Leaven; Chocolate; Chocolate-based beverages; Chocolate mousses; Allspice; Celery salt; Bread rolls; Mustard meal; Soya bean paste [condiment]; Soya flour; Soya sauce; Sorbets [ices]; Sauces [condiments]; Spaghetti; Powders for ice cream; Baking soda [bicarbonate of soda for cooking purposes]; Starch for food; Star aniseed; Sushi; Natural sweeteners; Tabbouleh; Tacos; Tapioca; Tapioca flour; Dough; Ferments for pastes; Pasta; Tomato sauce; Tarts; Tortillas; Vanilla [flavoring] [flavouring]; Vanillin [vanilla substitute]; Waffles; Cream of tartar for culinary purposes; Wheat germ for human consumption; Sausage binding materials; Seasonings; Aromatic preparations for food; Chicory [coffee substitute]; Cinnamon [spice]; Gluten prepared as foodstuff; Pralines; Confectionery for decorating Christmas trees; Sweetmeats [candy]; Rusks.
Class 31: Sowing seeds; Agricultural products not included in other classes; Horticultural products not included in other classes; Forestry products not included in other classes; Live animals; Fruit, fresh; Vegetables, fresh; Seeds; Natural plants; Natural flowers; Foodstuffs and fodder for animals; Malt; Algarovilla for animal consumption; Algae for human or animal consumption; Aloe vera plants; Aromatic sand for pets [litter]; Oysters, live; Trees; Raw barks; Trunks of trees; Berries, fresh fruits; Flower bulbs; Beans, fresh; Distillery waste for animal consumption; Nettles; Eggs for hatching, fertilised; Chicory, fresh; Peas, fresh; Peanuts, fresh; Peanut meal for animals; Peanut cake for animals; Fish, live Fishing bait, live; Fish meal for animal consumption; Cucumbers, fresh; Lemons, fresh; Lettuce, fresh; Leeks, fresh; Spinach, fresh; Pet food; Lime for animal forage; Grains for animal consumption; Meal for animals; Foodstuffs and fodder for animals; Straw [forage]; Poultry, live; Mash for fattening livestock; Vegetables, fresh; Barley; Sanded paper for pets [litter]; Beverages for pets; Grains [cereals] Cereal seeds, unprocessed; Groats for poultry; Oats; Hazelnuts; Yeast for animal consumption Hay; Undressed timber; Wood chips for the manufacture of wood pulp; Hops; Hop cones; Lobsters, live; Dog biscuits; Locust beans, raw; Cocoa beans, raw; Potatoes, fresh; Edible chews for animals; Seed germ for botanical purposes; Bran; Bran mash for animal consumption; Coconuts; Coconut shell; Kola nuts; Copra; Rough cork; Strengthening animal forage; Wreaths of natural flowers; Crayfish, live; Crustaceans, live; Garden herbs, fresh; Fresh pumpkins; Spiny lobsters, live; Preparations for egg laying poultry; Linseed for animal consumption; Linseed meal for animal consumption; Flax meal [fodder]; Lentils, fresh; Maize; Maize cake for cattle; Malt for brewing and distilling; Almonds [fruits]; Chestnuts, fresh; Animal fattening preparations; Stall food for animals; Menagerie animals; Straw mulch; Live clams; By-products of the processing of cereals, for animal consumption; Nuts; Fruit, fresh; Olives, fresh; Oil cake; Oranges, fresh; Palms [leaves of the palm tree]; Palm trees; Plants; Plants, dried, for decoration; Seedlings; Mushrooms, fresh; Mushroom spawn for propagation; Peppers [plants]; Pollen [raw material] Rape cake for cattle; Vine plants; Rice, unprocessed; Rice meal for forage; Rhubarb, fresh; Fish spawn; Rye; Unsawn timber; Rose bushes; Beet, fresh; Shellfish, live; Residue in a still after distillation; Sea-cucumbers, live; Silkworms; Silkworm eggs Cuttle bone for birds; Sesame, unprocessed; Bushes; Litter for animals; Straw litter; Pine cones; Live animals; Bred stock; Natural turf; Litter peat; Grapes, fresh; Fruit residue [marc]; Draff; Flowers, dried, for decoration; Truffles, fresh; Foodstuffs and fodder for animals; Salt for cattle; Bird food; Juniper berries; Christmas trees; Wheat; Wheat germ for animal consumption; Roots for food; Chicory roots; Citrus fruit, fresh; Bagasses of cane [raw material]; Sugarcane; Onions, fresh vegetables.
Class 32: Beer; Mineral water [beverages]; Aerated water; Non-alcoholic beverages; Fruit beverages; Fruit juices; Syrups for making beverages; Preparations for making beverages; Non-alcoholic fruit extracts; Non-alcoholic fruit juice beverages; Non-alcoholic honey-based beverages; Aloe vera drinks, non-alcoholic; Aperitifs, non-alcoholic; Cider, non-alcoholic; Beer; Beer wort; Powders for effervescing beverages; Pastilles for effervescing beverages; Cocktails, non-alcoholic; Peanut milk [non-alcoholic beverage]; Preparations for making mineral water; Preparations for making aerated water; Essences for making beverages; Fruit nectars, non-alcoholic; Vegetable juices [beverages]; Extracts of hops for making beer; Ginger beer; Isotonic beverages; Kvass [non-alcoholic beverage]; Lemonades; Syrups for lemonade; Lithia water; Malt beer; Malt wort; Milk of almonds [beverage]; Orgeat; Mineral water [beverages]; Whey beverages; Most; Preparations for making liqueurs; Sarsaparilla [non-alcoholic beverage]; Seltzer water; Syrups for beverages; Smoothies; Soda water; Sherbets [beverages]; Table waters; Tomato juice [beverage]; Grape must, unfermented; Waters [beverages].
Class 33: Alcoholic beverages (except beer); Fruit extracts, alcoholic; Alcoholic essences; Alcoholic extracts; Alcoholic beverages containing fruit; alcoholic beverages, except beer; Anise [liqueur]; Anisette [liqueur]; Aperitifs; Cider; Arrack [arak]; Perry; Cocktails; Curacao; Distilled beverages; Kirsch; Liqueurs; Bitters; Mead [hydromel]; Nira [sugarcane-based alcoholic beverage]; Peppermint liqueurs; Rice alcohol; Rum; Sake; Brandy; Spirits; Piquette; Digesters [liqueurs and spirits]; Gin; Wine; Whisky; Vodka.
The contested goods and services are the following:
Class 29: Meat; Fish; Poultry; Game; Meat extracts; Preserved fruits; Vegetable preserves; Processed fruits, fungi and vegetables (including nuts and pulses); Frozen fruits; Frozen vegetables; Vegetables, cooked; Fruit, stewed; Jellies, jams, compotes, fruit and vegetable spreads; Jellies; Marmalade; Birds eggs and egg products; Milk; Milk products; Edible oils; Olive oil; Oils and fats; Dishes of fish; Prepared meat dishes; Prepared meals containing [principally] eggs; Vegetable-based entrees; Including all of the aforesaid goods of organic and biodynamic origin.
Class 30: Coffee; Artificial coffee; Rice; Tapioca; Sago; Cereals; Bread; Sponge cake; Sweetmeats [candy]; Edible ices; Sugar; Honey; Syrups and treacles; Yeast; Salt; Mustard; Vinegar; Herb-sauces; Spices; Ice; Ready-made dishes containing pasta; Prepared rice dishes; Prepared pizza meals; including all of the aforesaid goods of organic and biodynamic origin; Tea; Cocoa; Farina [meal]; Baking powder.
Class 31: Horticultural products not included in other classes; Live animals; Fruit, nuts, fresh vegetables; Seeds; Natural plants; Flowers; Foodstuffs and fodder for animals; Malt; including all of the aforesaid goods of organic and biodynamic origin; Grains [cereals]; Agricultural produce (Unprocessed -); Trees and forestry products.
Class 32: Beers; Mineral water [beverages]; Aerated water; Non-alcoholic beverages; Fruit squashes; Fruit-based beverages; Juices; Syrups for beverages; Preparations for making beverages; including all of the aforesaid goods of organic and biodynamic origin.
Class 33: Alcoholic beverages (except beer); Wine; Spirits and liquors; including all of the aforesaid goods of organic and biodynamic origin.
Class 35: Advertising; Business management; Business administration; Office functions; Services provided by a franchiser, Namely commercial management and development assistance; Publication of publicity texts; Import-export agencies (services, for others, including in relation to the organic and biodynamic sectors); Retail services relating to food; Wholesaling of foodstuffs; Retailing in relation to beverages; Wholesaling in relation to beverages; Organisation of trade fairs for commercial or advertising purposes; Restaurant management; Restaurant management for others.
Class 43: Serving food and drinks; Take-out restaurant services; Take-away fast food services; Bar services; Delicatessens (restaurants); Providing food and drink in restaurants and bars; Temporary accommodation.
An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.
The term ‘including’, used in the applicant’s list of goods and services, indicates that the specific goods and services 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).
However, the term ‘namely’, used in the applicant’s list of services to show the relationship of individual services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.
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 goods in Class 29
The contested meat; fish; poultry; game; meat extracts; preserved fruits; vegetable preserves; frozen fruits; vegetables, cooked; jellies (listed twice), jams, compotes; marmalade; milk; milk products; edible oils; fats; including all of the aforesaid goods of organic and biodynamic origin are identically contained in both lists of goods (including synonyms).
The contested processed fruit and vegetables (including nuts and pulses); including all of the aforesaid goods of organic and biodynamic origin 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; including all of the aforesaid goods of organic and biodynamic origin include, as a broader category, or overlap with the opponent’s mushrooms, preserved. 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 frozen vegetables; including all of the aforesaid goods of organic and biodynamic origin are included in the broad category of the opponent’s preserved vegetables. Therefore, they are identical.
The contested fruit, stewed; including all of the aforesaid goods of organic and biodynamic origin are included in the broad category of the opponent’s preserved, dried and cooked fruits. Therefore, they are identical.
The contested fruit and vegetable spreads; including all of the aforesaid goods of organic and biodynamic origin are included in the broad category of the opponent’s jams; marmalade. Therefore, they are identical.
The contested birds eggs; including all of the aforesaid goods of organic and biodynamic origin are included in the broad category of the opponent’s eggs. Therefore, they are identical.
The contested olive oil; including all of the aforesaid goods of organic and biodynamic origin is included in the broad category of the opponent’s edible oils. Therefore, they are identical.
The contested oils; including all of the aforesaid goods of organic and biodynamic origin include, as a broader category, the opponent’s edible oils. 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 egg products; including all of the aforesaid goods of organic and biodynamic origin can have the same origin, purpose and method of use as the opponent’s eggs. When an ingredient can be considered the main ingredient of a prepared dish, similarity can be considered to exist between them (04/05/2011, T-129/09, Apetito, EU:T:2011:193, § 12 & 29). Therefore, these goods are similar.
The contested dishes of fish; prepared meat dishes; prepared meals containing [principally] eggs; vegetable-based entrees; including all of the aforesaid goods of organic and biodynamic origin are similar to the opponent’s fish; meat; eggs; vegetables [cooked] (respectively), as they may have the same producers and end users and are also in competition with each other.
Contested goods in Class 30
The contested coffee; artificial coffee; rice; tapioca; sago; cereals; bread; sweetmeats [candy]; sugar; honey; syrups and treacles; yeast; salt; mustard; vinegar; spices; ice; including all of the aforesaid goods of organic and biodynamic origin; tea; cocoa; baking powder are identically contained in both lists of goods (including synonyms).
The contested sponge cake; including all of the aforesaid goods of organic and biodynamic origin is included in the broad category of the opponent’s cakes. Therefore, they are identical.
The contested edible ices; including all of the aforesaid goods of organic and biodynamic origin overlap with the opponent’s ice cream, and they are therefore identical.
The contested herb-sauces; including all of the aforesaid goods of organic and biodynamic origin are included in the broad category of the opponent’s sauces [condiments]. Therefore, they are identical.
The contested farina [meal] is included in the broad category of the opponent’s flour. Therefore, they are identical.
The contested ready-made dishes containing pasta; prepared rice dishes; prepared pizza meals; including all of the aforesaid goods of organic and biodynamic origin are similar to the opponent’s pasta; rice; pizzas (respectively), as they may have the same producers and end users and are in competition with each other.
Contested goods in Class 31
The contested horticultural products not included in other classes; live animals; nuts, fresh vegetables; seeds; natural plants; flowers; foodstuffs and fodder for animals; malt; including all of the aforesaid goods of organic and biodynamic origin; grains [cereals]; trees are identically contained in both lists of goods.
The contested fruit; including all of the aforesaid goods of organic and biodynamic origin includes, as a broader category, the opponent’s fresh fruit. 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 agricultural produce (unprocessed -) is included in the broad category of the opponent’s agricultural products not included in other classes. Therefore, they are identical.
The contested forestry products include, as a broader category, the opponent’s trees. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
Contested goods in Class 32
The contested beers; mineral water [beverages]; aerated water; non-alcoholic beverages; fruit-based beverages; syrups for beverages; preparations for making beverages; including all of the aforesaid goods of organic and biodynamic origin are identically contained in both lists of goods (including synonyms).
The contested fruit squashes; juices; including all of the aforesaid goods of organic and biodynamic origin are included in the broad category of the opponent’s fruit beverages. Therefore, they are identical.
Contested goods in Class 33
The contested alcoholic beverages (except beer); wine; spirits and liquors; including all of the aforesaid goods of organic and biodynamic origin are identically contained in both lists of goods (including synonyms).
Contested services in Class 35
The contested advertising; business management; business administration; office functions; services provided by a franchiser, namely commercial management and development assistance; publication of publicity texts; import-export agencies (services, for others, including in relation to the organic and biodynamic sectors); organisation of trade fairs for commercial or advertising purposes; restaurant management; restaurant management for others are dissimilar to all the opponent’s goods. The goods and services belong to different areas of activity, are of different natures and have different initial purposes. In addition, goods are tangible, whereas services are intangible.
Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.
Therefore, the contested retail services relating to food; wholesaling of foodstuffs; retailing in relation to beverages; wholesaling in relation to beverages are similar to a low degree to the opponent’s food and beverages in Classes 29-33, for example meat; fish; poultry and game in Class 29 and beer; mineral water [beverages] in Class 32.
Contested services in Class 43
All the opponent’s goods in Classes 29, 30, 31, 32 and 33 are foodstuffs and drinks. The contested services serving food and drinks; take-out restaurant services; take-away fast food services; bar services; delicatessens (restaurants); providing food and drink in restaurants and bars involve serving food and drinks directly for consumption.
The mere fact that food and drinks are consumed in a restaurant is not sufficient reason to find similarity between them (09/03/2005, T-33/03, Hai, EU:T:2005:89, § 45 and 20/10/2011, R 1976/2010-4, Thai SPA / SPA et al., § 24-26).
Nevertheless, in certain situations these goods and services can be complementary (17/03/2015, T-611/11, Manea Spa, EU:T:2015:152, § 52; 15/02/2011, T-213/09, Yorma’s, EU:T:2011:37, § 46). In particular, goods or services are complementary if one is indispensable or important for the use of the other in such a way that consumers may think that responsibility for the production of those goods or the provision of those services lies with the same undertaking.
On the other hand, consumers may think that responsibility lies with the same undertaking if the market reality is that the provision of food and drinks and the manufacture of such goods are commonly offered by the same undertaking under the same trade mark (e.g. coffee in coffee shops, ice cream in ice cream parlours, and beer in pubs). In such cases, there is a low degree of similarity.
In the present case, the opponent’s meat; fish; poultry; game; meat extracts; preserved, dried and cooked fruits and vegetables are complementary to the applicant’s restaurant services, namely serving food and drinks; take-out restaurant services; take-away fast food services; bar services; delicatessens (restaurants); providing food and drink in restaurants and bars. Furthermore, they can have the same producers and/or providers and the same distribution channels. Therefore, these goods and services are similar to a low degree.
The contested temporary accommodation is not similar to the opponent’s goods and services. They differ in nature, as goods are tangible while services are intangible. Furthermore, the goods and services under comparison are neither complementary nor in competition and they differ in their methods of use. They do not have the same producers. It follows that they are dissimilar.
- 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 and services found to be identical or similar to various degrees are directed at the public at large. The degree of attention is considered average.
- The signs
Earlier trade mark | Contested sign |
The relevant territory is Germany.
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, consisting of the verbal element ‘CUCINA’ in rather standard white upper case letters inside a figurative element resembling a cooking pot, depicted in red with a gold border.
The contested mark is a figurative mark, consisting of two verbal elements, ‘CUCINA’ and ‘BIOLOGICA’, in standard black lower case letters one above the other and a figurative element consisting of a curved line, possibly depicting leaves or a butterfly, also in black, in the top right corner.
The element ‘CUCINA’, present in both marks, has no meaning for the relevant public and is, therefore, distinctive. The applicant argues that the word ‘CUCINA’ will be understood in German and submits evidence to prove this. However, these extracts from the internet, namely a list of Italian restaurants and an extract from an Italian-English dictionary, do not demonstrate that the meaning of the word ‘CUCINA’ is known by the German-speaking public. It is not a basic word and does not appear in the largest German dictionary, Duden (information extracted from Duden German Dictionary on 14/06/2017 at www.www.duden.de/suchen/sprachwissen/cucina). Therefore, the applicant’s argument must be set aside as unfounded.
The element ‘BIOLOGICA’ of the contested sign will be understood as meaning ‘relating to biology’, ‘biological’. The relevant public will understand this foreign word, since it is very close to the word for ‘biology’ in German, ‘Biologie’ (information extracted from the Duden German Dictionary on 12/06/2017 at www.duden.de). Bearing in mind that the relevant goods and services are, inter alia, foodstuffs, beverages and restaurant services, this element is weak for these goods and services, namely for meat; fish; poultry; game; meat extracts; preserved fruits; vegetable preserves; processed fruits, fungi and vegetables (including nuts and pulses); frozen fruits; frozen vegetables; vegetables, cooked; fruit, stewed; jellies, jams, compotes, fruit and vegetable spreads; jellies; marmalade; birds eggs and egg products; milk; milk products; edible oils; olive oil; oils and fats; dishes of fish; prepared meat dishes; prepared meals containing [principally] eggs; vegetable-based entrees; including all of the aforesaid goods of organic and biodynamic origin in Class 29; coffee; artificial coffee; rice; tapioca; sago; cereals; bread; sponge cake; sweetmeats [candy]; edible ices; sugar; honey; syrups and treacles; yeast; salt; mustard; vinegar; herb-sauces; spices; ice; ready-made dishes containing pasta; prepared rice dishes; prepared pizza meals; including all of the aforesaid goods of organic and biodynamic origin; tea; cocoa; farina [meal]; baking powder in Class 30; horticultural products not included in other classes; live animals; fruit, nuts, fresh vegetables; seeds; natural plants; flowers; foodstuffs and fodder for animals; malt; including all of the aforesaid goods of organic and biodynamic origin; grains [cereals]; agricultural produce (unprocessed -); trees and forestry products in Class 31; beers; mineral water [beverages]; aerated water; non-alcoholic beverages; fruit squashes; fruit-based beverages; juices; syrups for beverages; preparations for making beverages; including all of the aforesaid goods of organic and biodynamic origin in Class 32; alcoholic beverages (except beer); wine; spirits and liquors; including all of the aforesaid goods of organic and biodynamic origin in Class 33; retail services relating to food; wholesaling of foodstuffs; retailing in relation to beverages; wholesaling in relation to beverages in Class 35; and serving food and drinks; take-out restaurant services; take-away fast food services; bar services; delicatessens (restaurants); providing food and drink in restaurants and bars in Class 43.
As regards the earlier sign, it is composed of a distinctive verbal element and a less distinctive figurative element. Therefore, the verbal element is more distinctive than the figurative element.
In the contested sign, the figurative element is less distinctive than the verbal elements.
The element ‘CUCINA’ in the earlier sign is the dominant element as it is the most eye-catching.
The contested sign has no elements 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 coincide in ‘CUCINA’, which is distinctive for the relevant goods and services in the relevant territory. However, they differ in the verbal element ‘BIOLOGICA’ of the contested mark, which is weak for the relevant goods and services, as explained above, and in the stylisation of the marks, including their figurative elements.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛CUCINA’, present identically in both signs. This element is distinctive, as explained above. The pronunciation differs in the sound of the letters ‛BIOLOGICA’ of the contested mark, which have no counterparts in the earlier sign. This verbal element is weak for the relevant goods and services, as explained above.
Therefore, the signs are aurally highly similar.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with dissimilar meanings, the signs are not conceptually similar.
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
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.
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).
The goods and services are partly identical, partly similar to various degrees and partly dissimilar. The signs are visually similar to an average degree and aurally highly similar. The goods and services are directed at the public at large and the degree of attention is average.
The earlier mark is of normal distinctiveness in the relevant territory.
The visual and aural similarities between the signs derive from the verbal element ‘CUCINA’, which is the dominant element in the earlier mark and the most distinctive element in the contested sign.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the German-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s German trade mark registration.
It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar, even to a low degree, to those of the earlier trade mark. The high degree of similarity between the signs outweighs the low degree of similarity between the goods and services.
The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.
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 goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
Michal Beniamin KRUK | Lena FRANKENBERG GLANTZ | 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.