ROBI | Decision 2787615
Date Published: Sep 25, 2017
OPPOSITION No B 2 787 615
Codan, S.A., Camino de la Galeana, s/n. Carretera de Madrid - Valencia Km. 25, 28500 Arganda del Rey (Madrid), Spain (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)
a g a i n s t
Mof Holding a. s., Krížna 56, 821 08 Bratislava, Slovakia (applicant).
On 28/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 787 615 is upheld for all the contested goods, namely
Class 30: Baked goods, confectionery, chocolate and desserts; savory pastries; sausage rolls.
2. European Union trade mark application No 15 587 331 is rejected for all the contested goods. It may proceed for the remaining services.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 587 331, namely against all the goods in Class 30. The opposition is based on Spanish trade mark registration No 2 640 400. 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 goods
The goods on which the opposition is based are the following:
Class 30: Bakery goods, pastry and confectionery.
The contested goods are the following:
Class 30: Baked goods, confectionery, chocolate and desserts; Savory pastries; Sausage rolls.
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.
Contested goods in Class 30
Baked goods; confectionery are identically contained in both lists of goods (including synonyms, i.e. the contested baked goods and the opponent’s bakery goods).
The contested savory pastries are included in the broad category of the opponent’s pastry. Therefore, they are identical.
The contested sausage rolls are included in the broad category of the opponent’s bakery goods. Therefore, they are identical.
The contested dessert overlaps with the opponent’s pastry to the extent that the former can consists of pastry. Therefore, these goods identical.
The contested chocolate is similar to a high degree to the opponent’s confectionary because the latter often contains or is based on chocolate and these conflicting goods have the same purpose as luxury (or indulgence) foodstuffs. These goods are produced and sold by confectioneries.
- 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 average.
- The signs
ROBIN | ROBI |
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).
Because the marks are word marks, neither of them has any element that could be considered clearly more dominant (visually eye-catching) than other elements.
The word ‘ROBIN’ of the earlier mark, despite a missing accent on the letter ‘I’, corresponds to the Spanish word ‘Robín’ meaning ‘metal rust’ (information extracted from Real Academia Española at http://dle.rae.es/). However, the Office considers that only a part of the relevant public will be aware of this meaning. The following comparison will focus on the part of the public who do not understand the word. Irrespective of whether it is understood or not, the word ‘ROBIN’ of the earlier mark, is considered distinctive being neither descriptive nor allusive of the relevant goods, as well as the word ‘ROBI’ of the contested sign, that has no meaning for the relevant public.
Visually and aurally, the signs coincide in the letters/sounds ‘ROBI*’, which constitute the entirety of the contested sign and the first four letters of the earlier mark. They differ only in the last letter/sound of the earlier mark ‘N’. This differencing letter at the end of the earlier mark is of little importance as regards the impression it might produce on customers, who are most likely to focus on the signs’ initial, coinciding, elements. This observation can also apply from an aural point of view, the sound at the beginning of the marks first catching the attention of the consumer. Both marks consist of two syllables and share a similar rhythm and phonetic structure.
Given the minimal difference between the signs in the final letter of the earlier sign where it has less impact, it can be concluded that the signs are visually and aurally highly similar.
Conceptually, neither of the signs has a meaning for the relevant 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
In the present case, the goods are partly identical and partly similar and the signs only differ in one letter, which is placed at the end of the earlier mark. This makes the conflicting word elements visually and aurally highly similar. On the other hand, the marks under comparison lack concepts that could help consumers to differentiate between them.
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 goods/services covered are from the same or economically linked undertakings.
Account is taken of 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).
Taking all the above into account, the Opposition Division considers that the only difference between the signs in the last letter of the earlier mark ‘N’ is not sufficient to counterbalance the high degree of similarity between them from the visual and aural perspectives, and the relevant public, when encountering the signs in relation to identical or similar goods, is likely to think that they come from the same undertaking or from economically linked undertakings.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 2 640 400. It follows that the contested trade mark must be rejected for all the contested 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.
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
María Belén IBARRA DE DIEGO | Angela DI BLASIO | Francesca CANGERI SERRANO |
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.