Kerrygold | Decision 2296385 - HIJOS DE MOISES RODRIGUEZ GONZALEZ, S.A. v. ORNUA Co-operative Limited
Date Published: Sep 28, 2017
OPPOSITION No B 2 296 385
Hijos De Moises Rodriguez Gonzalez, S.A., Calle de Mendoza, 2 - El Cebadal, 35008 Las Palmas de Gran Canaria, Spain (opponent), represented by J. Lopez Patentes y Marcas, S.L., C/. Paz, nº 14-2º-3ª, 46003 Valencia, Spain (professional representative)
a g a i n s t
Ornua Co-operative Limited, Grattan House, Mount Street Lower, Dublin 2, Ireland (applicant), represented by Tomkins & Co., 5 Dartmouth Road, Dublin 6, Ireland (professional representative).
On 31/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 296 385 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 of European Union trade mark application No 12 100 831, namely, dairy produce (for food); milk, skimmed milk, butter milk, sour milk, edible cream, all especially in liquid, condensed, frozen or powder form; milk products (for food); UHT milk; milk drinks, mainly of milk or of skimmed milk; butter, cheese, yoghurt, whey for food (not as a beverage), sour milk products, butter preparations, cheese preparations, curds (quark); butters containing herbs and spices, edible oils and fats, including butter oils, milk fat, milk semi-fats; milk products as semi-manufactured products for the foodstuffs industry; food products made substantially from milk, milk products, edible oils or edible fats with or without water; dried (preserved) milk, as a foodstuff; desserts based on milk, cream, yogurt; edible spreads; edible spreads containing herbs and spices; bread spreads, mainly of a mixture of one or more dairy products, especially butter, cream, milk, skimmed milk or butter milk, with water, optionally with milk proteins; bread spreads mainly of cheese, with milk and/or skimmed milk, optionally with flavourings in Class 29. The opposition is based on European Union trade mark registration No 12 043 659 registered for butter; butter from Ireland in Class 29. 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 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 Opposition Division notes at the outset that both marks are 3D marks consisting of the representation of fairly standard shaped butter packages.
The earlier mark consists of a gold elliptic package on which several verbal and figurative elements are displayed, most of which are barely visible and, hence, negligible.
Among the visible elements are the words ‘Mantequilla’, ‘Pura’, ‘de’, ‘Irlanda’ written in a black standard title case. Below them and placed against a green frame reminiscent of a label, the elements ‘La’ and ‘Irlandesa’ are written in a white standard slanted typeface and, underneath, the representation of a loop is displayed.
The words ‘Mantequila’, ‘Pura’, ‘de’, ‘Irlanda’ form a meaningful expression for the Spanish-speaking part of the public, namely, ‘Pure butter from Ireland’ which is completely descriptive and, hence, non-distinctive in relation to butter; butter from Ireland in Class 29 for which the earlier mark is registered. The Spanish-speaking part of the public will also understand the elements ‘La’ and ‘Irlandesa’ as meaning ‘The Irish’, which also indicates the geographical origin of the butter in question.
As regards the remaining part of the public, the Opposition Division notes that a substantial part of it is also likely to recognise the words ‘Irlanda’ and ‘Irlandesa’ as referring to Ireland, or, because these words also exist in other official languages of the European Union, or, because close variations thereof exist in other European languages (‘Irlande’ and ‘Irlandaise’ in French, ‘Irlanda’ and ‘Irlandese’ in Italian, ‘Irlanda’ and ‘Irlandês’ in Portuguese, ‘Irland’ and ‘Irisch’ in German etc.). Therefore, they are likely, as the Spanish-speaking part of the public, to perceive the word elements ‘Irlanda’ and ‘Irlandesa’ as descriptive of the geographical origin of the butter in question. Finally, for the part of the public who does not see any meaning in the earlier mark’s word elements, these word elements are distinctive.
As regards the figurative elements, the Opposition Division recalls that, according to settled case-law, when signs consist of both verbal and figurative components, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).
Moreover, it shall be borne in mind that it is very common for rectangular frames to be used as backgrounds for verbal elements or to highlight information contained in the mark (15/12/2009, T-476/08, Best Buy, EU:T:2009:508, § 27).
In that connection, it is considered that since the figurative elements of the earlier mark have an aesthetic purpose and/or serve to highlight the word elements, they are not particularly distinctive.
Finally, as regards the shape of the package, the Opposition Division considers that, since it does not depart from the norms of the sector, it will not, as such, be given any trade mark significance (12/01/2006, C-173/04 P, Three-dimensional shapes of stand-up pouches for fruit drinks and fruit juices, EU:C:2006:20, § 31, and 22/06/2006, C-25/05 P, Representation of a gold-coloured sweet wrapper, EU:C:2006:422, § 28).
In fact, to be distinctive, the shape must depart significantly from the shape that is expected by the consumer, and it must depart significantly from the norm or customs of the sector. The more closely the shape resembles the shape that is most likely to be taken by the product in question, the greater the likelihood that it is not distinctive (judgment of 07/10/2004, C-136/02 P, Torches, EU:C:2004:592, § 31).
As a result of all the above-said, the conclusion is taken that for the part of the public for which they do not have any meaning, the verbal elements ‘Mantequilla Pura de Irlanda’ and ‘La Irlandesa’ are the most distinctive elements of the earlier mark while, for the remaining part, all the elements taken separately are weak.
Due to their size (more than two times as big as the remaining elements) and central position both on the cover and on the sides of the package, the word elements ‘La Irlandesa’ clearly dominate the overall impression produced by the earlier mark.
The contested sign consists of the representation of a yellow circular package provided with a gold sticker displayed on two sides of the package as well as on its cover. On the sticker, the word ‘Kerrygold’ is written in title and quite standard white case against a green frame reminiscent of a label and, above it, the representation of a dairy cow feeding. These elements are repeated on the cover of the package, in the same configuration and proportions.
The word element ‘Kerrygold’ has no meaning as a whole in the perception of the public of the European Union. As it is not descriptive, allusive or otherwise weak in relation to the goods at hand, it is distinctive.
On the other hand, the typeface in which ‘Kerrygold’ is represented is rather standard. Furthermore, as explained above, rectangular frames are commonly used as backgrounds for verbal elements to highlight information contained in the mark. Moreover, in the Opposition Division’s view, the representation of a cow lacks any distinctive character in relation to the contested goods since they all consist of milk and dairy products (see, in that connection, 09/04/2014, T-623/11, MILANÓWEK CREAM FUDGE, EU:T:2014:199, § 44, where the representation of a cow was considered allusive for chocolate bars, chocolate products; sweets, drops, toffees, in particular made by using milk, cream and/or butter). Finally, as the shape of the package does not depart from the norms of the sector, it also lacks any distinctive character.
Bearing this in mind, it is considered that the word element ‘Kerrygold’ is the most distinctive element of the contested sign. Due to its bigger size as well as its central position, it is also the most dominant (visually eye-catching) element of the contested sign.
Visually, the signs somehow coincide in that they both consist of the representation of a butter package and to the extent that they both include a green frame reminiscent of a label as a background for the word elements.
However, the shape of the package represented in the contested sign is different from that of the earlier mark. Moreover, the shape of the contested sign’s rectangle is slightly different from that of the earlier mark and its green shading is lighter.
In any event, bearing in mind that the packages’ shape will not be perceived as a badge of origin, whereas other elements will, even if it was the same in the earlier mark and the contested sign, it would not provide any relevant similarity between these signs. In the same line, the Opposition Division notes that the fact that both signs are provided with a green frame reminiscent of a label as a background for the words ‘La Irlandesa’ and ‘Kerrygold’ respectively is not decisive.
Finally, the marks in dispute differ in all remaining elements, in particular, their word elements which usually have a stronger impact on consumers. While the earlier mark contains several word elements the contested sign is made of the single word element ‘Kerrygold’.
As they coincide in irrelevant aspects but differ in their most distinctive and dominant elements, the signs in dispute, contrary to the opponent’s arguments, produce a very different overall visual impression.
Therefore, the signs are visually dissimilar.
Aurally, bearing in mind that the earlier mark is dominated by ‘La Irlandesa’, it is very likely that only these words would be pronounced (see, 21/03/2013, T-353/11, eventer EVENT MANAGEMENT SYSTEMS, EU:T:2013:147, § 69).
Therefore, irrespective of the different pronunciation rules in different parts of the relevant territory, the earlier mark will most probably be pronounced ‘La Irlandesa’ while the contested sign will be pronounced ‘Kerrygold’.
In any event, it is noted that if the remaining verbal elements of the earlier mark were to be pronounced by the relevant public, this would only make the signs even further apart to one another from an aural perspective.
As the signs do not aurally coincide in any element, it is concluded that they are aurally dissimilar.
Conceptually, although the marks coincide in the fact that they both consist of butter packages, which will not go unnoticed by the relevant public, and as this package is in itself, non-distinctive, it cannot provide any conceptual similarity between the signs.
Moreover, the same holds true about the various figurative elements of the marks. Taking into account their limited or even non-distinctive character, they are not capable of providing any similarity or dissimilarity between the signs.
As explained above, the attention of the relevant public will be attracted by the verbal elements of the signs. In that connection, it is noted that, although the earlier mark will evoke ‘Ireland’ to a substantial part of the relevant public, as the contested sign does not convey such concept, they are not similar for this part of the public.
Finally, for the part of the public who does not perceive any meaning in the marks’ verbal elements, the conceptual aspect does not influence the assessment of the similarity of the signs.
As explained above, the signs merely coincide in irrelevant aspects. Therefore, they are dissimilar overall.
- Conclusion
According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.
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
Carmen SÁNCHEZ PALOMARES | Marine DARTEYRE | Zuzanna STOJKOWICZ |
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.