Happy Moreno choco | Decision 2721697
Date Published: Sep 28, 2017
OPPOSITION No B 2 721 697
Aldi Einkauf GmbH & Co. oHG, Eckenbergstr. 16 A, 45307 Essen, 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
Zpc Flis Spółka Jawna, Kuranów 12, 96-325 Radziejowice, Poland (applicant), represented by Kancelaria Patentowa "Property" Tomaszewska i Syn, ul. E. Kwiatkowskiego 1 lokal 12, 03-984 Warsaw, Poland (professional representative).
On 10/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 721 697 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 028 087. The opposition is based on, inter alia, German trade mark registration No 307 02 840. The opponent invoked Article 8(1)(b) EUTMR.
Earlier trade mark | Contested sign |
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 German trade mark registration No 307 02 840.
- The goods and services
The goods on which the opposition is based are the following:
Class 30: Coffee, coffee-based products and beverages with proportion of coffee, cocoa-based beverage powder.
The contested goods and services are the following:
Class 30: Confectionery, sweetmeats [candy], wafer biscuits, wafer rolls, pastries.
Class 35: Retailing or wholesaling of confectionery, cookie molds, edible wafers and rolled wafers, wholesaling and retailing of confectionery, cookie molds, edible wafers and rolled wafers via the internet.
Contested goods in Class 30
When comparing the contested goods confectionery, sweetmeats [candy], wafer biscuits, wafer rolls, pastries, which are all kinds of confectionery and bakery products, with the opponent’s coffee based beverages, these are dissimilar. Contrary to the opponent’s assertions, even though they are foodstuffs, their nature and purpose are different, as the opponent’s goods are for drinking versus products to eat. Furthermore, they can normally be found in different areas of supermarkets. These goods are also usually manufactured by different kinds of undertakings.
Contested services in Class 35
The contested retailing or wholesaling of confectionery, cookie molds, edible wafers and rolled wafers, wholesaling and retailing of confectionery, cookie molds, edible wafers and rolled wafers via the internet and the opponent’s goods in Class 30 are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the sale of goods, such as wholesale services, internet shopping, etc. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.
Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are dissimilar.
- Conclusion
According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.
For the sake of completeness, the Opposition Division points out that the opponent has also based its opposition on German trade mark registration No 30 702 839 for the figurative mark for coffee, coffee-based products and beverages with proportion of coffee, cocoa-based beverage powder in Class 30.
Since this mark covers the same 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.
Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Chantal VAN RIEL | Klaudia MISZTAL | Saida CRABBE |
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.