ISAVE | Decision 2735457

Date Published: Sep 28, 2017

OPPOSITION No B 2 735 457

Grupo Conservas Garavilla S.L., Polígono Lamiaran-Aranburu, Mendekano auzoa s/n, 48360 Mundaka (Bizkaia), Spain (opponent), represented by Juan Carlos Riera Blanco, Avda. Concha Espina, 8 - 6º D, 28036 Madrid, Spain (professional representative)

a g a i n s t

Blackrock Fund Advisors, 400 Howard Street, San Francisco, California 94105, United States of America (applicant), represented by Ashfords LLP, Ashford House Grenadier Road, Exeter EX1 3LH, United Kingdom (professional representative).

On 15/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 735 457 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 13 473 343. The opposition is based Spanish trade mark registrations No 2 399 495, 2 527 283 and 2 527 284. The opponent invoked Article 8(1) (b) and Article 8(5) 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 Spanish trade mark registration No 2 399 495.

1. The services

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

Class 35: Advertising; business management; business administration; office functions.

The contested services are the following:

Class 35: Providing information and analysis relating to economic market data; providing business and market research services to individual and institutional financial investors and financial professionals; business management consultation; market analysis.

Contested services in Class 35

The contested providing information and analysis relating to economic market data; providing business and market research services to individual and institutional financial investors and financial professionals; business management consultation; market analysis are included in the broad category of, or overlap with, the opponent’s business management. Therefore, they are identical.

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 services found to be identical are specialised services directed at business customers with specific professional knowledge or expertise whose degree of attention is deemed higher than average.

3. The signs

ISABEL	ISAVE
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 contested sign has no meaning for the relevant public and is, therefore, distinctive. The earlier mark will be associated with a female given name by the relevant public. As it is not descriptive, allusive or otherwise weak for the relevant services, it is also distinctive.

Visually, the signs coincide in the letters ISA*E(*). However, they differ in their respective fourth letters, 'B' in the earlier mark and 'V' in the contested sign, as well as in the final letter of the earlier mark, 'L'. The General Court has held that since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will share some of them, but they cannot, for that reason alone, be regarded as visually similar. (25/03/2009, T-402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82 confirmed by 04/03/2010, C-193/09 P, ARCOL / CAPOL, EU:C:2010:121). The signs also differ slightly in length. In view of all the foregoing, the signs are similar to a low degree.

Aurally, despite the identical sounds of the single letters ‛I-S-A-B/V-E’ of the signs and while both signs will be pronounced in three syllables, /I-SA-BEL/ and /I-SA-VE/, it must be borne in mind the stress must be laid on the last syllable in the earlier mark whereas it lies on the second syllable in the contested sign. In view of this, the emphasis, loudness, and pitch are different, that such circumstance clearly affects the pronunciation of the signs for which they are only similar to an average degree.

Conceptually, as seen above, the public in the relevant territory will associate the earlier mark with a female given name whereas the contested sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, 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.

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 trade mark has a reputation in Spain but it is not clear from the notice of opposition or from the opponent's observations in relation to what such reputation as been acquired as the opponent failed to indicate this information. Nevertheless, in order to proceed in the best interest of the opponent, the Office will assume that such reputation is claimed for all the services on which the opposition is based, namely Class 35: Advertising; business management; business administration; office functions.

This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted evidence to support this claim. As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of the following documents:

Item 1: Spanish Office of Patents and Trademarks (OEPM) decisions in Opposition cases in which the Office establishes:

• 15-07-2015 – “The notoriety of the opposing trademark is applied in the field of feeding”;

• 24-09-2015 – “Despite the proven notoriety on the family marks of GRUPO CONSERVAS GARAVILLA, S.L. in the sector of goods in class 29, especially salads, …”;

• 07-10-2015 - “It’s of not application Art. 8.1. LM in relation to the well known trademarks M-2527283 and M-2527284 ISABEL, because they are well-known trademarks in the food products area….”

Item 2: Webpage www.isabel.net of the opponent with a brief introduction to the company (history, marketing and presence on international markets) and ISABEL brand and the possibility to access to several promotional videos of “ISABEL” products through the years starring 'very famous actors, actresses or TV reporters'. Those promotional spots can also be seen on YouTube.

Item 3: Awards

• 2011 BEST PRODUCT

www.isabel.net.- TUNA MEATBALLS ISABEL RECEIVE EUROPE'S BEST PRODUCT 2011 AWARD - European Tuna Conference has awarded this year's with the "Europe's Best Tuna Product 2011" award for most innovative and highest quality product of the year in which the tuna meatballs Isabel won the award among the most important fish canneries worldwide.

• 2013 ‘O GROVE AWARDS

2013-11-07 www.farodevigo.es: EMPLOYER’S ASSOCIATION GRANTS THE AWARD OURO' 'O GROVE SELECTED CONSERVAS DE GALICIAGARAVILLA: Selected Canned Galicia SL, industry traditionally known in O Grove, Galicia and Spain as Galician Canned Isabel, Garavilla belonging to the Basque group, the company is honored this year with the "O Grove Ouro" award, granted by the Empresarios Grovenses de Bens e Servicios (Emgrobes).

• BEST PACK 2014

2014-04-03 www.isabel.net.- BEST PACK 2014 AWARDS: GOLD AWARD FOR TUNA NATURFRESH: Canned Isabel has managed in the Best Pack 2014 the top prize, GOLD, for tuna Naturfresh Awards. On Thursday April 3, 2014, at night, it took place awards in the Best Pack 2014 Hotel Hesperia Tower (Barcelona). The Best Pack Awards are considered one of the most rigorous awards in his field.

2014-04-05 www.comunicae-es .- COLEMAN CBX GETS A GOLD AND SILVER IN THE FORM BRANDING - PACKAGING AWARDS 2014 BEST PACK.- The Gold Prize was awarded to the packaging designed by Coleman CBX for Tuna Naturfresh Isabel , in the category corresponding to Precooked, Frozen and Canned.

www.bestawards.marketing .- PACKAGING 2014

Tuna Naturfresh

Gold: ISABEL advertiser | Brand ISABEL

Canned Group Garavilla, S.L.

2014-04-28 www.amoveo.es .- THE BEST PACKAGING IN THE BEST PACK 2014.- Gold Best Pack Packaging 2014:

Tuna Naturfresh

ISABEL advertiser | Brand ISABEL| Canned Group Garavilla, S.L.

• 2015 PRODUCT OF THE YEAR AWARDS

www.cetalpesca.es: Finally, in 2015 , after hard work Conservas Isabel was awarded in three products for such a prestigious award as "Product of the Year", which give consumers and innovative products, this time was to bowl salads, tuna Naturfresh and bi-pack anchovies.

2014-12-16 www.isabel.net.- 2015 PRODUCT OF THE YEAR AWARD: Isabel awarded in three categories: Salad bowl, tuna and anchovy fillets Naturfresh. On Tuesday December 16, 2014, took place the ceremony of the awards "Product of the Year. Grand Innovation Award 2015" in the Caixa Forum (Barcelona) building the brand ISABEL was elected Product of the Year 2015, in three different categories: Prepared salads Salads with Bol; in the category of Canned Tuna Naturfresh the range and in the semi with anchovy fillets in olive oil bi-pack.

---

2014-12-17 www.distribucionactualidad.com PRODUCT OF THE YEAR AWARDS.

CATEGORY	PRODUCT	COMPANY
Prepared salads	Isabel salad bowl	Conservas Garavilla Group
Preserved food	tuna Naturfresh	Conservas Garavilla Group
semi	Anchovy bi-pack of Isabel	Conservas Garavilla Group

• 2013-2016 CLARA AWARDS

2014-01-15 www.isabel.net.- TUNA NATURFRESH AWARDED BY READERS OF CLARA MAGAZINE: Yesterday, January 15, 2014 the Brand Manager of Naturfresh, Miren Telleria, went to collect the prize awarded by the readers of the magazine Clara in the category of Best Preserves 2013.(…) "Canned Isabel continues to promote innovation and product improvement, to satisfy the needs of their consumers" and of course like to thank the readers of the magazine CLARA their support and confidence in the brand.

2016-02-02 www.isabel.net.- LIGHT SALAD BOWL AWARDED BY THE READERS OF THE MAGAZINE CLARA: Clara magazine as every year, announces the awards "CLARA Smart Consumer" Power. And this year in the category of Best Product Light has won LIGHT SALAD BOWL, salad with just 95 calories.

Item 4: News

• Advertising in some of the largest supermarkets in Spain: Continente, Spar, Supercash Muñoz, Pryca, Al-Lado or El Corte Inglés from 1967 to 1992;

• Sponsor:

1991-1993 Canoeing Team Conservas Isabel Breogan

2013-01-10 Conservas Garavilla, SA sponsor of the premiere of the new season of “Cuéntame”

2015-09-12 www.mediamaraton.soria.es XXXII Half Marathon Soria Sport City: Current sponsors: ISABEL;

• Articles: Several articles about ISABEL from 1996 to 2016 including studies about ISABEL brand.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use, let alone reputation, in relation to the services on which the opposition is based. Indeed, none of the above documents mention any activity whatsoever of the opponent in relation to such services. Rather, the documents illustrate the opponent's activities in the food industry, more precisely in relation to goods belonging to class 29 and the opposition is not based on such goods.

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 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.

5. Global assessment, other arguments and conclusion

As indicated above, 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).

In the present case, the services at issue are identical and the degree of attention displayed by the public is higher than average. The earlier mark is distinctive to a normal degree and the signs are visually similar to a low degree and aurally similar to an average degree. Moreover, the earlier mark contains a clear concept whereas the contested sign has, at best from the opponent's perspective, no meaning whatsoever for the relevant public.

The Opposition Division is of the opinion that the clear and immediate association that the relevant public will make with a female given name when encountering the earlier mark affects significantly the overall impression caused by the signs and suffices, together with the visual and aural differences, to offset their similarities. Therefore, there is no likelihood of confusion on the part of the public even for identical services and the opposition must be rejected.

The opponent has also based its opposition on the following earlier trade marks:

Spanish trade mark registrations No 2 527 283 for the figurative mark and No 2 527 284 for the figurative trade mark , both for advertising; business management; business administration; office functions in Class 35.

These earlier rights invoked by the opponent are less similar to the contested mark than the earlier mark analysed above. This is because they contain further figurative elements which are neither present in the above earlier mark or in the contested sign. Moreover, they cover the same services as the earlier trade mark analysed above and the evidence filed to prove their enhanced distinctiveness/ reputation is the same as filed for said trade mark. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(5) EUTMR because, as seen above, from the evidence filed by the opponent, it does not appear that the earlier trade marks have acquired a reputation in relation to the services on which the opposition is based.

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

Alexandra APOSTOLAKIS

Martina GALLE

Begoña URIARTE VALIENTE

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.