OMEGAKIDS | Decision 624/2016-5

Date Published: Sep 28, 2017

THE BOARDS OF APPEAL

DECISION of the Fifth Board of Appeal of 8 March 2017

In Case R 624/2016-5

Markant Handels und Service GmbH Hanns-Martin-Schleyer-Str. 2 77656 Offenburg Germany Opponent / Appellant represented by Weickmann & Weickmann Patentanwälte - Rechtsanwalt PartmbB, Richard-Strauss Straße 80, 81679 München, Germany

Sanboy Comercio de Productos Alimenticios, S.L. c. Osca, 18-20 08830 Sant Boi de Llobregat Spain Applicant / Respondent represented by Sugrañes Patentes y Marcas, Calle de Provenza, 304, 08008 Barcelona, Spain

APPEAL relating to Opposition Proceedings No B 2 330 853 (European Union trade mark application No 11 318 706)

THE FIFTH BOARD OF APPEAL

composed of G. Humphreys (Chairperson), A. Szanyi Felkl (Rapporteur) and A. Pohlmann (Member)

Registrar: H. Dijkema

gives the following

Language of the case: English

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Decision

Summary of the facts

1 By an application filed on 05 November 2012, Sanboy Comercio de Productos Alimenticios, S.L. (‘the applicant’) sought to register the figurative mark in blue and yellow colours:

for goods and services in Classes 5, 29 and 30, namely:

‘Pharmaceutical preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; vitamin supplements and food supplements’ in Class 5;

‘Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats’ in Class 29;

‘Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; ices and ice creams; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice’ in Class 30. 2 The application was published on 17 December 2013.

3 On 17 March 2014, Markant Handels und Service GmbH (‘the opponent’) filed an opposition against the registration of the published trade mark application based on the EUTM registration No 6 685 614 of the word mark ‘OMEGA’, filed on 21 February 2008 and registered on 5 July 2010 (after subsequent limitation) for:

‘Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs; edible oils and fats in Class 29; ‘Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, except bread mixes and prepared baking mixes for making bread; pastry and confectionery, ices; honey, treacle; yeast, baking- powder; salt, mustard; vinegar, sauces (condiments); spices; ice’ in Class 30; ‘Beers; non-alcoholic drinks except for waters and lemonades; fruit drinks and fruit juices; syrups and other preparations for making beverages’ in Class 32.

4 The grounds of opposition were those laid down in Article 8(1)(b) EUTMR, the opponent limiting its opposition to ‘dietetic substances adapted for medical use, food for babies’ in Class 5 and all the goods in Classes 29 and 30. The opposition was based on all the earlier goods, except for beers in Class 32.

5 After numerous procedural irregularities, by decision of 5 February 2016 (‘the contested decision’), the Opposition Division partially upheld the as amended as amended as amended the contested goods, namely:

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Class 29 – ‘milk and milk products; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes’

Class 30 – ‘coffee, tea, cocoa and artificial coffee’.

For the rest of the goods it rejected the opposition and gave, in particular, the following grounds for its decision:

The goods - the Opposition Division based the opposition only on the earlier goods in Class 32, which resulted as follows:

━ The contested ‘dietetic substances adapted for medical use, food for babies’ and the opponent’s goods in Class 32 differ with regard to their main purpose as the contested goods are specialised diet-related products or baby products for feeding babies and infants, whereas the opponent’s goods are intended to quench thirst. Consequently, they are neither in competition nor complementary. The goods also differ in their producers and are distributed through different channels. Therefore the contested goods and the opponent’s goods in Class 32 are dissimilar;

━ The contested ‘milk products’ are similar to the opponent’s ‘fruit drinks’ in Class 32, as they have the same purpose, are in competition, are distributed through the same sales channels and target the same end user;

━ The contested ‘preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes’ have some relevant points in common with the opponent’s ‘fruit drinks and fruit juices; syrups and other preparations for making beverages’ in Class 32, as they target the same consumers. Moreover, they can originate from the same producer and can be found at the same points of sale. Therefore, they are similar to a low degree;

━ The contested ‘meat, fish, poultry and game; meat extracts; eggs; edible oils and fats’ do not share anything with the opponent’s ‘drinks’. The contested goods are all foodstuffs or goods generally belonging to the food industry and they differ in both nature and purpose from the earlier mark’s goods. They do not share commercial origin, method of use or distribution channels. Therefore, these goods are dissimilar;

━ The contested ‘coffee, tea, cocoa and artificial coffee’ are all used for preparation of drinks which are generally served hot. Given that such drinks are non-alcoholic they can be in competition with the opponent’s ‘non-alcoholic drinks’. They can also share the same commercial origin as coffee and tea producers often offer a wider range of products which includes the earlier goods. For these reasons the goods are similar;

━ The contested ‘rice; tapioca and sago; pastry and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice’ are various products belonging to the food sector or, in the case of ice, used for cooling (often foodstuffs) which differ in all relevant criteria for comparison. Consequently, these goods have nothing relevant in common with the opponent’s goods in Class 32. The conflicting goods have different natures, different purposes and

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different methods of use. They are not complementary to nor in competition with each other. Moreover, they are usually not manufactured by the same undertakings. Therefore, these goods are dissimilar.

━ Visually, the signs are similar to the extent that they coincide in the word ‘OMEGA’. However, they differ in the additional word ‘KIDS’ of the contested sign, as well as in the stylisation of the contested figurative trade mark, where the letters ‘O-M-E-G-A’ are written in blue capital letters and the letters ‘K-I-D-S’ are written in yellow lowercase typeface;

━ Aurally, the pronunciation of the signs coincides in the sound of the letters ‛OMEGA’, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the wording ‘KIDS’ of the contested mark, which has no counterpart in the earlier sign;

━ Conceptually, due to the use of different colours, it is reasonable to assume, that the contested sign will be perceived by the relevant public as the juxtaposition of the words ‘OMEGA’ and ‘KIDS’;

━ The majority of the public in the relevant territory will perceive the word ‘OMEGA’ of both signs as ‘the 24th and last letter of the Greek alphabet (Ω, ω), a long vowel, transliterated as o or ō’ or as ‘the ending or last of a series’. It could also be perceived by some of the consumers as an indication of unsaturated fatty acids, namely by those who are familiar with omega-3 or omega-6 fatty acids;

━ The word ‘KIDS’, contained in the contested sign, is an English term which refers to ‘children or young people’ and will be understood by the significant part of the relevant public;

━ The signs are conceptually similar to the extent their share the element

‘OMEGA’;

━ Taking into account the abovementioned visual, aural and conceptual

coincidences, the signs under comparison are similar;

━ The majority of the consumers will not perceive the term ‘OMEGA’ as referring to a type of fatty substance but consider this word as a fanciful term without any close connection with food. From that perspective, the distinctiveness of this element must be considered to be normal;

━ The element ‘KIDS’ included in the contested mark will be perceived as referring to the children or young persons. Bearing in mind that the relevant goods are ‘foodstuff’, it can be seen as an indication that these goods target children. The part of the relevant public who understands the meaning of that element will not pay as much attention to this non- distinctive element as to the other element of the mark, ‘OMEGA’. Consequently, the impact of this element is limited when assessing the likelihood of confusion between the marks at issue;

━ The marks under comparison have no elements which could be considered

clearly more dominant than others;

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━ The goods found to be similar (to various degrees) are directed at the public at large. In light of the nature of the goods, the attentiveness of the public is likely to be average;

━ The similarities between the signs may lead the consumer to believe that the goods found to be similar to various degrees come from the same undertaking or from economically-linked undertakings. For example, they might, when seeing the contested application, think that they are looking at a new line of products from the opponent;

━ Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public, especially considering that the degree of attentiveness will be lower than average;

━ Therefore, the opposition is well founded, and the contested trade mark must be rejected for the goods found to be similar to various degrees to those of the earlier trade mark.

6 On 4 April 2016, the opponent filed an appeal against the contested decision, requesting that the decision is set as far as the opposition was rejected. The statement of grounds of the appeal was received on 3 June 2016.

7 In its observations in reply received on 14 July 2016, the applicant requests that the appeal be dismissed and the contested decision be set aside to the extent that the trade mark applied for was rejected.

Submissions and arguments of the parties

8 The arguments raised in the statement of grounds may be summarised as

follows:

– It was wrong for Opposition Division to conclude that the opposition was a priori only based on the Class 32 goods of the earlier trademark with the exception of beer. If the opponent had wished to make such a limitation, the entry on the opposition form would have been the following: ‘all goods in class 32 except for beer’ or something similar – the reference to Class 32 refers to ‘beer’ and not all goods;

– The opponent’s submissions must be taken into account – there are extensive explanations in relation to the comparison of goods which include Classes 29 and 30;

– These submissions – in fact, all the submissions of the opponent – were ignored by Opposition Division. It is not clear that they were even considered at all;

– The Notice of Opposition makes a clear reference to the opposed goods as including those Classes 29 and 30 of the application. Given that the opponent’s earlier right specifies goods in Classes 29 and 30 that are identical to those of the contested sign, it would beggar belief that the opponent would not include the latter as a basis of its opposition;

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– The applicant did not in any way question the fact that the opposition was based on all goods of the earlier trademark (minus ‘beer’). In observations filed on 18 June 2015, argument based on Classes 29 and 30 were included in its submissions;

– In the context of this the contested goods are either identical or similar to those of the earlier right and the finding in the contested decision of confusion should be confirmed for all the contested goods, with the applicant bearing the cost of proceedings.

9 The arguments raised in reply to the appeal may be summarised as follows:

– The opponent is attempting to expand the basis of the opposition – contending it was based on all the goods in Classes 29, 30 and 32, except for ‘beer’ in class 32 only;

– The clear meaning of the words on the Notice of Opposition form: ‘all goods except for “beer” in class 32’ equates to ‘all goods in class 32 except beer’ – none of the other classes was specified as the opposition basis;

– The basis of an opposition is set at the time of filing the same, not later and certainly not during an appeal – the fact that the opponent’s observations of 16 July 2014 refers to goods in classes 29 and 30 in its comparison of goods is not relevant;

– The fact that the applicant submitted observations in reply to the opposition contesting everything stated in the opponent’s observations does not show that the basis of the opposition was wider than class 32 – such submissions were only included to protect the applicant’s interests;

– Rule 15(2)(f) CTMIR states that the notice of opposition must contain a clear indication of the goods and services on which the opposition is based, and in the language of the proceedings;

– The EUIPO Trademark guidelines specifies that when an opposition is based on part of the goods covered by the earlier trademark only, the Opponent must list the goods in the language of the proceedings. However, the Office states that it will also accept an indication of the relevant classes numbers, if the Opponent provides evidence of the goods included in such classes;

– The similarity of goods reflects the analysis in the contested decision, as

does the likelihood of confusion;

– The appeal must be refused, the contested decision confirmed, with the

opponent paying costs.

Reasons

10 The appeal complies with Articles 58, 59 and 60(1) EUTMR and Rules 48 and

49 CTMIR. It is, therefore, admissible.

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11 According to Article 64(1) EUTMR, following the examination as to the admissibility of the appeal, the Board of Appeal shall decide on the appeal. It may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution. In this instance, the Board considers it appropriate to annul the contested decision since the assessment underpinning it was based on a significant procedural error.

12 In order to comply with the obligations to undertake a full and thorough examination in proceedings before the Office, and the parties legitimate interests in the case being examined by both instances thereof, the Board deems it 9/1/2017, R 2366/2015-5, KiG GLASSWARE (fig.) / kik et al. appropriate to remit the case to the Opposition Division for further prosecution and a full and complete examination of the merits of the opposition. The case has not been definitively decided upon, since the decision as to the substance of the opposition is clearly wrong.

13 Article 15(2) CTMIR states, inter alia, that the ‘... notice of opposition shall

contain:

(b) a clear identification of the earlier mark or earlier right on which the opposition is based, ...

(f) the goods and services on which the opposition is based’.

14 In the view of the Board, these indications are very clearly established on the opposition form submitted in this case. The section setting out ‘Goods and services on which the opposition is based’ has a tick in the the box called ‘part of the goods and services, namely...’, and is quantified by the statement ‘all goods except for “beer” in class 32’.

15 In the view of the Board, there is more than sufficient clarity here, for the purposes of Article 15(2). There is a clear indication of the earlier right and of the goods on which the opposition was based. According to Communication No 5/07 of the President of the Office of 12/09/2007 on changes of practice in opposition proceedings, an indication of the class number is accepted as sufficient indication of the goods and services of the earlier rights on which the opposition is based. The Office will also accept an indication of the relevant class number, provided that a registration certificate or extract from an official source is attached in the language of the proceedings (Guidelines for Examination in the Office, Part C, Opposition, page 21). The Notice of Opposition was accompanied by an English translation of the earlier right which is registered for the following goods:

Class 29 – Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, edible oils and fats;

Class 30 – Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, except bread mixes and prepared baking mixes (not included in other classes), for making bread; pastry and

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confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice;

Class 32 – Beers; non-alcoholic drinks except for waters and lemonades; fruit drinks and fruit juices.

16 All the above goods were intended to be included as a basis of the opposition. Yet the contested decision was limited to only the goods of the earlier right in Class 32, minus beer.

17 The Board admits that there may be an alternative reading to the statement ‘all goods except for “beer” in class 32’, but it is hardly an obvious one, especially in the light of the opponent’s other submissions. The notice of opposition and the opponent’s statement accompanying it must be interpreted together, as a whole (see, by analogy, 03/04/2014, T-356/12, Sô:Unic, EU:T:2014:178, § 47). Given that the opponent was opposing goods specified with the contested sign that included Classes 29 and 30 (clearly indicated in the ‘Extent of the opposition’ section of the form) which were identical to those registered with the earlier right in the same Classes, it would be incredible to conclude it actually intended to remove from the opposition its most effective weapon in resisting the registration of the contested sign. Such an assertion against the opponent’s own interest makes the alternative interpretation, as applied in the contested decision, obtuse.

18 Further, it is clear that neither party shared the position taken by the Opposition Division and that neither party had any doubts as to the extent and scope of the opposition. Both parties based the comparison of goods part of their submissions on the goods as set out in Classes 29, 30 and 32 of the earlier right, and there was no mention at this stage of ambiguity as to the basis of the opposition. In this respect, the applicant’s contention that it only submitted observations in reply at first instance contesting everything set out in the opponent’s observations to protect its interests – and that the latter should not be taken as an indication that it considered the basis of the opposition was wider than Class 32 (sin ‘beer’) – are simply not credible. That there is an opportunistic element to the applicant’s submissions on appeal, in this respect, is obvious from a perusal of its observations at first instance. For example, its submissions dated 18 June 2015 states at paragraph 1 ‘... the opposition ... is based on the following prior registration:’ where details of, including a full list of the goods of the earlier right, is provided.

19 Later in submissions, the applicant states (paragraph 3.1) ‘despite the fact that both trademarks claim the same classes 29 and 30...’ and ‘... despite that both trademarks coincide in the number of the Nice International Classification regarding part of the applied for goods in classes 29 and 30 of the contested application ... the compared signs are not similar..’. It is clear that also the applicant had no doubts about the scope of the opposition.

20 In the context of these considerations, the Board has no choice but to annul the contested decision and remit the same to back to Opposition Division for a proper prosecution of this case.

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Costs

21 Since at this stage of the procedure there is no losing party, the Board deems it equitable, pursuant to Article 85(2) EUTMR, that each party bears its own costs in the appeal proceedings. Nevertheless, the Board considers that the appeal fee should be refunded to the opponent given the procedural mistake that has occurred. As regards the costs of the opposition proceedings, those costs must be fixed by the Opposition Division in its forthcoming decision.

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Order On those grounds,

THE BOARD

1. Annuls the contested decision;

2. Refunds the appeal fee to the opponent, with no further decision on

costs at this stage; and

3. Remits the case to the Opposition Division for further prosecution.

Signed

G. Humphreys

Signed

A. Szanyi Felkl

Signed

A. Pohlmann

Registrar:

Signed

H.Dijkema

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OMEGAKIDS | Decision 624/2016-5

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