MILZU | Decision 2554924 - Efeito Verde - Lda v. Milzu!,SIA

Date Published: Oct 1, 2017

OPPOSITION No B 2 554 924

Efeito Verde – Lda, R. António Nobre, 34, 3400-084 Oliveira do Hospital, Portugal (opponent), represented by Alvaro Duarte & Associados, Avª Marquês de Tomar, nº 44-6º, 1069-229 Lisboa, Portugal (professional representative)

a g a i n s t

Milzu! SIA, ‘Mikeli’, Rumbas pag., Kuldigas nov., 3301, Latvia (applicant), represented by Patent Agency KDK, Dzerbenes iela 27, Riga, 1006, Latvia (professional representative).

On 11/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 554 924 is upheld for all the contested goods, namely:

Class 30: Breakfast cereals flavoured with honey; breakfast cereals containing fruit; breakfast cereals containing honey; breakfast cereals containing fibre; breakfast cereals; maize flakes; muesli; muesli consisting predominantly of cereals; all the aforementioned goods except desserts, in particular chilled ready-to eat dessert products.

2.        European Union trade mark application No 14 038 871 is rejected for all the contested goods. It may proceed for the remaining goods.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 038 871, namely against all the goods in Class 30. The opposition is based on European Union trade mark registration No 12 562 674. The opponent invoked Article 8(1)(a) and (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.

1. The goods

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

Class 30:        Coffee, teas and cocoa and substitutes therefor; ice, ice creams, frozen yogurts and sorbets; processed grains, starches, and goods made thereof, baking preparations and yeasts; baked goods, confectionery, chocolate and desserts; salts, seasonings, flavourings and condiments.

During the adversarial phase of the proceedings, the applicant limited the list of goods specified in the application twice. The opponent was duly informed of these limitations and did not withdraw its opposition. Accordingly, the contested goods are the following:

Class 30:        Breakfast cereals flavoured with honey; breakfast cereals containing fruit; breakfast cereals containing honey; breakfast cereals containing fibre; breakfast cereals; maize flakes; muesli; muesli consisting predominantly of cereals; all the aforementioned goods except desserts, in particular chilled ready-to eat dessert products.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘in particular’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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.

The contested breakfast cereals flavoured with honey; breakfast cereals containing fruit; breakfast cereals containing honey; breakfast cereals containing fibre; breakfast cereals; maize flakes; muesli; muesli consisting predominantly of cereals; all the aforementioned goods except desserts, in particular chilled ready-to eat dessert products are similar to the opponent’s confectionery. These goods are often produced by the same undertakings (e.g. producers of muesli also produce confectionery bars made of cereals), are sold through the same distribution channels, target the same public and have the same purpose; moreover, they are in competition.

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 similar are goods for everyday consumption; the relevant public for these goods is the general public, with an average degree of attention.

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. 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 a figurative mark, consisting of a verbal element, ‘MIDZU’, depicted in a stylised bold font.

Contrary to the applicant’s arguments, the Opposition Division considers that the verbal element of the contested sign will be recognised by the majority of the relevant public at first glance, since they will recognise each letter without any additional analysis. Consequently, the contested sign is a figurative mark composed of the highly stylised verbal element ‘MILZU’ followed by an exclamation mark. Each letter is depicted in a different colour and formed of irregular small shapes. An exclamation mark is used to show that a word is an exclamation and will be attributed little, if any, trade mark significance.

Neither of the signs has a meaning for the relevant public and they are, therefore, distinctive.

Visually, the signs coincide in ‘MI*ZU’. However, they differ in the third letter, namely ‘D’ in the earlier mark versus ‘L’ in the contested sign. The signs also differ in the exclamation mark at the end of the contested sign, which has no counterpart in the earlier mark, as well as in their specific stylisation and the colours of the letters.

With respect to the graphic differences, it has to be noted that 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). Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛MI*ZU’, present identically in both signs. For the relevant public, they have the same number of syllables, namely two: /MID-ZU/ and /MIL-ZU/. The pronunciation differs in the sound of the letter ‛D’ of the earlier sign versus that of the letter ‘L’ of the contested sign. The exclamation mark at the end of the contested sign may affect the intonation of that sign but will not result in a clearly audible difference between the signs. Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

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.

5. Global assessment, other arguments and conclusion

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 services covered are from the same or economically linked undertakings.

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 at issue are similar. They target the public at large, whose degree of attention is average. Furthermore, the earlier mark enjoys a normal degree of distinctiveness and the signs in dispute are visually similar to an average degree and aurally highly similar.

Considering all the above and taking into account the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26), there is a likelihood of confusion for part of the public, namely the English-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 562 674. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Anna BAKALARZ

Alexandra APOSTOLAKIS

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.