FIFA APPLE | Decision 2705427

Date Published: Sep 25, 2017

OPPOSITION No B 2 705 427

Fédération Internationale de Football Association (FIFA), Fifa - Str. 20, 8044 Zürich, Switzerland (opponent), represented by Garrigues IP, S.L.P.,  C/Hermosilla 3, 28001 Madrid, Spain (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 26/07/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 705 427 is partially upheld, namely for the following contested goods:

Class 30:        Coffee, tea, Cocoa and artificial coffee; rice; tapioca and sago; Flour and preparations made from cereals; Bread, pastries and confectionery; edible ices; sugar, honey, treacle; Yeast, baking-powder; salt; mustard; vinegar; sauces (condiments); spices.

Class 31:        Agricultural, horticultural and forestry products; raw and unprocessed grains and seeds; fresh fruits and vegetables; natural plants and flowers; foodstuffs for animals; malt.

Class 32:        Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages.

2. European Union trade mark application No 15 091 051 is rejected for all the above goods:

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 091 051. The opposition is based on, inter alia, European Union trade mark registration No 9 027 343. 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 European Union trade mark registration No 9 027 343.

1. The goods and services

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

Class 30:        Coffee; tea; cocoa; sugar; honey; molasses; yeast; artificial coffee; flour; soya flour; preparations made from cereals; cereals; bread; pastries; cakes; cookies; crackers; candies; ice cream; confectionery; chocolate confectionery; chocolate; rice; dried cereal flakes; corn chips; mustard; vinegar; sauces (condiments); spices; salt; vitamin products (not for medical or dietetic purposes); preparations for use as dietetic additives for food for human consumption.

Class 31:        Foodstuff for animals; grass seeds; fresh fruits; fresh berries; fresh vegetables; flowers; natural turf; natural turf for sports playing-fields.

Class 32:        Soft drinks; concentrates, syrups and powder for making soft drinks; mineral and aerated waters; other non-alcoholic drinks; energy drinks, isotonic drinks, hypertonic drinks, hypotonic drinks; fruit and vegetable drinks and juices; frozen fruit drinks, non-carbonated, non-alcoholic frozen flavoured beverages; beverages enriched with added vitamins (not for medical purposes) beers; ales; non alcoholic beer.

Class 35:        Retail services in relation to food and food products, soft drinks and alcoholic drinks; Convenience store services in this class namely retailing of food and beverage products, sale and supply of beverages through vending machines; the bringing together, for the benefit of others, of food and food products, soft drinks and alcoholic drinks.

Class 43:        Providing of food and drink; Provision of food or drink.

The contested goods are the following:

Class 30:        Coffee, tea, Cocoa and artificial coffee; Rice; Tapioca and sago; Flour and preparations made from cereals; Bread, pastries and confectionery; Edible ices; sugar, honey, treacle; Yeast, baking-powder; Salt; Mustard; Vinegar; Sauces (condiments); Spices; Ice.

Class 31:        Agricultural, horticultural and forestry products; Raw and unprocessed grains and seeds; Fresh fruits and vegetables; Natural plants and flowers; Live animals; Foodstuffs for animals; Malt.        

Class 32:        Beers; Mineral and aerated waters and other non-alcoholic beverages; Fruit beverages and fruit juices; Syrups and other preparations for making beverages.        

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 30

Coffee, tea, cocoa and artificial coffee are identically contained in both lists of goods.

Rice is identically contained in both lists.

Flour and preparations made from cereals are identically contained in both lists of goods.

Bread, pastries and confectionery are identically contained in both lists of goods.

Sugar, honey, yeast are identically contained in both lists of goods, as are Salt; Mustard; Vinegar; Sauces (condiments) and spices.

The contested edible ices include, as a broader category, the opponent’s ice creams. 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 treacle  designates a variety of syrups made during the refining of sugar and includes, as a broader category, the opponent’s molasses. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Baking powder is highly similar to the opponent´s yeast, because they share the same nature, are in competition with each other and coincide in their pertinent distribution channels, producers and end users. 

Tapioca and sago are similar to the opponent´s flour, as they share the same methods of use, are in competition with each other and coincide in their pertinent distribution channels and producers. 

Ice is to be understood as ‘cooling ice’ and ice creams as a smooth, sweet and cold food prepared from a mixture of milk products and/or flavourings and often eaten as a snack or dessert. Their purpose and distribution channels are different as is their nature. Furthermore, they are neither in competition nor complementary. Therefore, they are dissimilar. The contested ice is also dissimilar to the rest of the opponent’s goods and services in Classes 30, 31, 32, 35 and 43, since they have no relevant points of contact under the abovementioned criteria. The fact that ice may be used in the opponent’s drinks in Class 32 is not sufficient for a finding of similarity.

Contested goods in Class 31

The contested agricultural, horticultural and forestry products overlap with the opponent´s foodstuff for animals. Since the Opposition Division cannot dissect ex officio the broad categories of goods, they are considered identical.

The fresh fruits and vegetables are identically contained in both lists, as are flowers.

The contested natural plants, raw and unprocessed grains and malt overlap with the opponent’s foodstuff for animals, and are, therefore, identical.

The contested raw and unprocessed seeds include the opponent´s grass seeds. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Live animals are clearly dissimilar to all the opponent´s goods and services, which are processed foodstuffs in Class 30, unprocessed foodstuffs, seeds, flowers and turf in Class 31, beverages in Class 32, retail services in relation to food and food products in Class 35 and the provision of food and drinks in Class 43. They are of a different nature and purpose, and are not complementary or in competition. Moreover, they do not have the same usual origin or distribution channels.

Contested goods in Class 32

Beers are identically included in both lists, as are mineral and aerated waters and other non-alcoholic beverages and fruit beverages and fruit juices and syrups, albeit with slightly different wording.

Other preparations for making beverages include, as a broader category, the opponent’s concentrates and powder for making soft drinks. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

        

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 goods found to be identical or similar (to various degrees) are directed at the public at large.

The degree of attention will be at most average, since some of the goods may be rather inexpensive and frequently purchased.

3. 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).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The figurative, verbal element “Apple” of the contested sign is meaningful in certain territories, for example, in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier figurative mark is made up of the word “FIFA”, which is depicted in a bold, black font with graduated letter “F” strokes.

The contested mark consists of the word “FIFA” in a rounded, blue font set at an angle against a green and white circular background, itself topped by the smaller word “apple”, which is depicted in a jaunty, red font. The background and graphical elements are purely decorative in nature in respect of comestibles.

The common element “FIFA” has no meaning for the relevant public (independent of foreknowledge of its meaning as an acronym) and is, therefore, distinctive. Their respective fonts are of a purely decorative nature. None of the figurative elements of the contested sign detract from the distinctive and visually dominant, verbal element “FIFA”.

The verbal element ‘apple’ of the contested sign will be perceived as a round fruit with smooth green, yellow, or red skin and firm white flesh by the English-speaking part of the public (collinsdictionary.com), and is, therefore, non-distinctive for fresh fruit. Bearing in mind that the rest of the relevant goods are mainly foodstuffs and beverages, this element is weak as it may be perceived as an ingredient or flavouring.

Visually, the signs coincide in the distinctive common element ‘FIFA’, which is the dominant element of the contested sign. They differ in their respective graphic elements which are of a purely decorative nature, and the word “apple” of the contested mark, which is either weak or non-distinctive depending on the particular goods.

Therefore, the signs are highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters which make up the distinctive element ‛FI-FA’, present identically in both signs, which is the visually dominant element of the contested sign. The pronunciation differs in the sound of the letters ‛ap-ple’, which has no counterpart in the earlier sign.  This element is either weak or non-distinctive depending on the goods.

Therefore, the signs are highly similar.

Conceptually, the distinctive element of both signs, which is visually dominant in the contested sign, has no meaning for the public in the relevant territory (independent of foreknowledge of the words that the letters represent as an acronym). The less dominant, verbal element of the contested sign, ‘apple’, designating a certain fruit, has no counterpart the earlier sign. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar, although the impact of this difference is diminished by the fact that its meaning renders this element weak or non-distinctive, respectively.

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 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, despite the presence of some graphic elements in the mark, which are purely stylistic in nature.

5. Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking
into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22). 

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.

The signs are visually and aurally highly similar and the consumers’ level of attention when buying the identical and similar goods is considered to be, at most, average. There is a likelihood of confusion because the differences between the signs are confined to non-distinctive or secondary elements and aspects. In fact, consumers may be led to believe that the contested sign constitutes a variation of the earlier mark, designating a certain product line.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 9 027 343. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar (to various degrees) to those of the earlier trade mark.

The rest of the contested goods 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 cannot be successful.

Since the opposition is partially 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 in relation to identical and similar goods. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing marks in relation to dissimilar goods, as the similarity of goods and services is necessary for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on the following earlier trade marks: European Union trade mark 10 351 492 “ФИФА”, and International registration No 7 7 477 78  designating Hungary, “FIFA”.

Since they both, cover a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those 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. 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 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

Rhys MORGAN

Keeva DOHERTY

Natascha GALPERIN

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.