NAHAR | Decision 2685454 - Egetürk Wurst- und Fleischwarenfabrikation GmbH & Co. KG v. United Sugar Company
Date Published: Sep 28, 2017
OPPOSITION No B 2 685 454
Egetürk Wurst- und Fleischwarenfabrikation GmbH & Co. KG, Feldkasseler Weg 5, 50769 Köln, Germany (opponent), represented by Siebeke - Lange - Wilbert, Cecilienallee 42, 40474 Düsseldorf, Germany (professional representative)
a g a i n s t
United Sugar Company, P.O. Box 23023, Jeddah 21426, Saudi Arabia (applicant), represented by Renaissance Solicitors Llp, 413 Hoe Street, Walthamstow, London E17 9AP, United Kingdom (professional representative).
On 03/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 685 454 is partially upheld, namely for the following contested goods:
Class 29: Meat; fish; poultry; game.
2. European Union trade mark application No 14 778 625 is rejected for all the above goods. It may proceed for the remaining goods and services.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 778 625, namely against some of the goods in Class 29. The opposition is based on, inter alia, international trade mark registration No 796 863 designating France. 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 international trade mark registration No 796 863 designating France.
- The goods
The goods on which the opposition is based are the following:
Class 29: Meat products and sausages.
After a limitation made by the opponent in its observations of 08/11/2016, the contested goods are the following:
Class 29: Meat; fish; poultry; game; Jellies.
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 meat is identically contained in both lists of goods, albeit with slightly different wording.
The contested poultry; game are identical to the opponent’s meat products, since these contested goods are included in the broad category of the opponent’s meat products.
The contested fish are similar to the opponent’s meat products, as they are all foodstuffs of animal origin and are therefore in competition with each other, have the same method of use and target the same public.
The applicant submitted evidence in German about the similarity between jellies and the opponent’s goods; however, the Opposition Division will not take this evidence into consideration, since it is not in the language of the proceedings. The contested jellies are dissimilar to the opponent’s goods. In spite of being foodstuffs, these goods differ in nature. The fact that they are sold through the same distribution channels to the public at large is not enough to establish a similarity between them, since they are generally displayed in different areas or on different shelves in groceries, supermarkets and department stores, and the public does not expect such goods to originate from the same companies. They are neither complementary nor in competition with each other. Consequently, they are dissimilar.
- 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 are directed at the public at large. The degree of attention is average.
- The signs
BAHAR | |
Earlier trade mark | Contested sign |
The relevant territory is France.
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).
Neither of the signs has any element that could be considered clearly more distinctive or more dominant than other elements.
The earlier mark is a word mark, ‘BAHAR’.
The contested sign is a figurative mark consisting of a verbal element, ‘NAHAR’, and two figurative elements resembling letters in Arabic script, above the verbal element, on a rectangular yellow background.
Visually, the signs coincide in ‘*AHAR’. However, they differ in their first letters, namely ‘B’ in the earlier mark versus ‘N’ in the contested sign. The signs also differ in the figurative elements resembling letters in Arabic script, the rectangular yellow background, the stylisation of the verbal elements and the colours of the contested sign. It is important to note 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 a low degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛*AHAR’, present identically in both signs. The pronunciation differs in the sound of the first letters, namely ‛B’ in the earlier mark versus ‘N’ in the contested sign. The figurative elements resembling letters in Arabic script will not be pronounced by the relevant public.
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.
- 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.
- 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).
As concluded above, the relevant goods are partly identical, partly similar and partly dissimilar. They target the public at large, whose degree of attention is average. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness and the signs are visually similar to a low 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 on the part of the relevant public.
Therefore, the opposition is partly well founded on the basis of the opponent’s international trade mark registration No 796 863 designating France.
It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.
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.
The opponent has also based its opposition on European Union trade mark registration No 13 805 916, international registration No 796 863 designating Austria, Benelux and the United Kingdom, and German trade mark registration No 1 094 197 for the word mark ‘BAHAR’.
Since these marks cover the same or a narrower scope of 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. 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
Katarzyna ZANIECKA | Alexandra APOSTOLAKIS | Pedro JURADO MONTEJANO |
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.