FIFA FROOTY | Decision 2705351
Date Published: Sep 25, 2017
OPPOSITION No B 2 705 351
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 05/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 705 351 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; 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.
2. European Union trade mark application No 15 090 897 is rejected for all the above goods. It may proceed for the remaining goods, namely:
Class 30: Ice.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 15 090 897, namely against all the goods in Classes 30, 31 and 32. The opposition is based on European Union trade mark registration No 9 027 343, European Union trade mark registration No 10 351 492 and international registration designating Croatia No 747 778. 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.
- 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; hospitality suites, namely, provision of food or drink, both on and off site sports facilities.
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.
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 ‘namely’, used in the opponent’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.
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, artificial coffee, rice, flour and preparation made from cereals; bread; pastries; confectionary; sugar; honey; yeast; salt; mustard; vinegar; sauces (condiments); spices are identically contained in both lists of goods.
The contested treacle includes, as a broader category, the opponent’s molasses. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.
Ices are to be understood as ‘ice creams’. Therefore, the contested edible ices and the opponent’s ice creams are identical.
The contested baking-powder is similar to a high degree to the opponent’s yeast. They have the same natures, producers, distribution channels and relevant public and are in competition.
The contested tapioca; sago are similar to the opponent’s flour. They have the same methods of use, producers, distribution channels and are in competition.
The contested ice is to be understood as ‘cooling ice’. The natures of the opponent’s ice cream and the contested ice are different. Although both consist (partly) of frozen water, their commercial nature is different because the latter is an auxiliary product used for preserving and/or cooling foodstuffs, whereas the former is a foodstuff. Their purpose and distribution channels are different. Furthermore, they are neither in competition nor complementary. Therefore, they are dissimilar. Ice is also different from all the opponent’s other goods and services. These contested goods and the remaining foodstuffs in Classes 30, 31 and 32 have different natures and usual origins and generally also have different distribution channels. They are neither complementary nor in competition. Furthermore, ices have nothing in common with the services in Classes 35 and 43.
Contested goods in Class 31
Fresh fruits and vegetables; flowers; foodstuffs for animals are identically contained in both lists of goods (including synonyms).
The contested agricultural, horticultural and forestry products include, as broader categories, the opponent’s natural turf. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.
The contested raw and unprocessed seeds include, as a broader category, or overlap with the opponent’s grass seeds. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.
The contested raw and unprocessed grains are similar to a high degree to the opponent’s grass seeds. They may have the same natures and methods of use, producers, distribution channels and relevant public.
The contested live animals are similar to the opponent’s foodstuff for animals. Live animals are often sold in, for example, pet shops, where foodstuffs for animals are also sold. Therefore, they have the same distribution channels and target the same relevant public. Furthermore, they are complementary to each other.
Malt culm is a co-product produced by maltsters, and can be sold as an animal feed because of its high protein content. Therefore, the contested malt is similar to the opponent’s foodstuff for animals. They have the same natures, distribution channels and relevant public.
The contested natural plants are similar to a low degree to the opponent’s grass seeds. They have the same distribution channels and relevant public.
Contested goods in Class 32
Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices are identically contained in both lists of goods (including synonyms).
The contested syrups and other preparations for making beverages include, as a broader category, or overlap with the opponent’s syrups and powder for making soft drinks. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s 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 or similar to different degrees are directed at the public at large. The degree of attention is average.
- 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 element ‘Frooty’ 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 mark is figurative, consisting of the verbal element ‘FIFA’ in slightly stylised black upper case letters.
The contested mark is a figurative mark, consisting of the stylised verbal elements ‘Frooty’, at the top and in italics but in a line rising from left to right, in red title case letters, and ‘FIFA’ in larger blue letters underneath. The letters ‘oo’ in the word ‘Frooty’ consist of two cherries with a connecting leaf. The words are against a red stain-like background.
The element ‘FIFA’ in both marks will be understood, by a significant part of the English-speaking public, as an acronym for ‘Fédération Internationale de Football Association: the international governing body of association football’ (information extracted from Collins English Dictionary on 19/06/2017 at www.collinsdictionary.com). As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.
The figurative element ‘Frooty’ (including the cherries depicted therein) of the contested sign will be associated with ‘fruity’. This is because it is very close to this English word. Bearing in mind that the relevant goods are foodstuffs that may have a fruity taste or contain fruit, this element is weak for some of the goods, namely for coffee, tea, cocoa and artificial coffee; preparations made from cereals; bread, pastries and confectionery; edible ices; honey, treacle; sauces (condiments); spices; fresh fruits; beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages.
The stain-like background in the contested mark is an abstract shape and, as such, not particularly distinctive, if at all.
The element ‘FIFA’ in the contested sign is the dominant element as it is the most eye-catching.
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 the verbal element ‘FIFA’. This element is distinctive. However, they differ in the smaller verbal element ‘Frooty’ (which is weak for some of the goods, as described above) of the contested sign and in the colours and additional figurative elements of the marks.
Therefore, the signs are visually similar, at least to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛FIFA’, present identically in both signs. This element is distinctive, as described above. The pronunciation differs in the sound of the letters ‛Frooty’ of the contested mark, which have no counterparts in the earlier sign. This component is weak for some of the goods, as explained above.
Therefore, the signs are aurally similar, at least to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning in the coinciding and distinctive verbal element ‘FIFA’, the signs are conceptually highly 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.
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 English-speaking 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 partly identical, partly similar to various degrees and partly dissimilar. They target the public at large. The degree of attention is average.
The signs are visually and aurally similar to, at least, an average degree and conceptually highly similar, to the extent that they coincide in the distinctive verbal element ‘FIFA’.
The entire verbal element of the earlier mark is included in the contested sign.
Taking into account all the relevant circumstances of the case, the differences between the marks, which result from the smaller verbal element ‘Frooty’ in the contested mark (which is weak for some of the goods), the additional figurative elements and the different stylisation of the marks, are not sufficient to counterbalance the similarity between them. The relevant public may believe that the relevant goods and services come from the same undertaking or at least economically-linked undertakings.
Indeed, it is highly conceivable that the relevant consumer will perceive the contested sign 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, 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 partly well-founded on the basis of the opponent’s European Union trade mark registration. 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, even to a low degree, to those of the earlier trade mark. The high degree of similarity of the signs outweighs the low degree of similarity of the goods.
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 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.
The opponent has also based its opposition on the following earlier trade marks:
European Union trade mark registration No 10 351 492 for the word mark ‘ФИФА’ and international trade mark registration No 747 778 designating Croatia for the figurative mark .
Since this latter mark is identical to the one which has been compared and covers the same or a narrower scope of goods and services, 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.
The other earlier right, ‘ФИФА’, is less similar to the one which has been compared and covers the same scope of goods and services. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; 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 will decide a different apportionment of costs.
Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
Irina SOTIROVA | 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.