Rode | Decision 2767989

Date Published: Sep 25, 2017

OPPOSITION No B 2 767 989

Groupe Lactalis, société anonyme à directoire et conseil de survei, 10, rue Adolphe Beck, 53000 Laval, France (opponent), represented by Novagraaf France, Bâtiment O2 - 2, rue Sarah Bernhardt, CS 90017, 92665 Asnières-sur -Seine, France (professional representative)

a g a i n s t

Kingikaubamaja OÜ, Pikk tn 15, 10123 Tallinn, Estonia (applicant), represented by Patendibüroo Käosaar OÜ, Tähe 94, 50107 Tartu, Estonia (professional representative)

On 10/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 767 989 is partially upheld, namely for the following contested goods and services:

Class 29: Meats; charcuterie; cured sausages; hotdog sausages; ham; game, not live; meat preserves; meat extracts; fish, not live; fruits, tinned [canned (am.)]; fruit-based snack food; vegetables, tinned [canned (am.)]; snack foods based on vegetables; jams; eggs; milk; dairy products; oils and fats. 

Class 35: Retail services in relation to foodstuffs.

2.        European Union trade mark application No 15 488 984 is rejected for all the above goods and services. 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 15 488 984, namely against all the goods in Class 29 and part of the services in Class 35. The opposition is based on the following earlier marks:

• International trade mark registration designating Italy No 941 264

• Italian trade mark registration No 611 931 (later No 1 433 352) RODEZ (word mark)

The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION OF INTERNATIONAL TRADE MARK No 941 264

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the present case the notice of opposition was not accompanied by any evidence as regards the earlier International trade mark registration No 941 264 on which the opposition is, inter alia, based.

On 20/09/2016 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 25/01/2017.

The opponent did not submit any evidence concerning the substantiation of the earlier International trade mark registration No 941 264.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark.

The examination of the opposition will proceed on the basis of earlier Italian trade mark registration No 611 931.

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 and services

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

Class 29: Meat, fish, game, poultry (except poultry such gallus), meat extracts, fruits and vegetables preserved by, dried and cooked, jellies, jams, milk, butter, eggs, cheeses, creams and all other dairy products, edible oils and fats, salad dressings, preserves.

The contested goods and services are the following:

Class 29: Meats; charcuterie; cured sausages; hotdog sausages; ham; game, not live; meat preserves; meat extracts; fish, not live; fruits, tinned [canned (am.)]; fruit-based snack food; vegetables, tinned [canned (am.)]; snack foods based on vegetables; jams; eggs; milk; dairy products; oils and fats. 

Class 35: Procurement services for others [purchasing goods and services for other businesses]; demonstration of goods; sales promotion for others; retail services in relation to foodstuffs; retail services in relation to confectionery. 

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 29

The contested meats; game, not live; meat extracts; fish, not live; jams; eggs; milk; dairy products; oils and fats are covered in the opponent´s list of goods, either identically or by using slightly different wording. These goods are identical.

The contested charcuterie; cured sausages; hotdog sausages; ham; meat preserves are covered by the opponent´s broad category of meat. Therefore, these goods are identical.

The contested fruits, tinned [canned (am.)]; vegetables, tinned [canned (am.)] are identical to the opponent´s fruits and vegetables preserved by, dried and cooked, since they overlap.

The contested fruit-based snack food are identical to the opponent´s fruits, dried, since dried fruits are often sold as a kind of snack and, therefore, these goods overlap. The same applies to the contested snack foods based on vegetables, which are identical to the opponent´s vegetables, dried, following the same reasoning.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Since the opponent´s goods in Class 29 fall within the broad category of foodstuffs to which the contested services refer, being therefore identical to them, the contested retail services in relation to foodstuffs are similar to a low degree to the opponent’s goods in Class 29, which are all edible goods (i.e. foodstuffs).

The contested retail services in relation to confectionery and the opponent´s goods are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are, at most, only similar.

The contested procurement services for others [purchasing goods and services for other businesses]; demonstration of goods; sales promotion for others, all referring to business support services, are dissimilar to the opponent´s goods. Even if the contested services can be offered in relation to many different kinds of goods, including those of the opponent, this is not enough to lead to similarity between them, since these goods and services differ in nature, purpose, method of use, distribution channels and points of sale. They are neither complementary nor in competition, are not directed at the same consumers and are not likely to come from the same kind of undertakings.

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 and services found to be identical or similar (to a low degree) are directed at the public at large.

The degree of attention paid by consumers during their purchase is deemed to be lower than average, since they involve daily consumption products of low prices.

3. The signs

RODEZ
Earlier trade mark	Contested sign

The relevant territory is Italy.

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 word “rodez” forming the earlier mark is perceived as having no concept by the relevant public. Therefore, this element is of average distinctive character in relation to the goods involved.

The contested sign is formed by the word “Rode” and a red figurative element which seems to be a label or coat of arms, with something negligible inside. A negligible element refers to an element that due to its size and/or position is not noticeable at first sight or is part of a complex sign. In the contested mark, the figure inside the red figurative element is barely perceptible. As this is likely to be disregarded by the relevant public, this element inside the red figurative element will not be taken into consideration in the present comparison.

The red figurative element is of less visual impact than the word accompanying it, due to its size and position (i.e. much smaller than the verbal element, and positioned in a secondary position of the mark). Therefore, it can be stated that the contested sign is formed by the dominant element “Rode” and the red figurative element, of less visual impact.

The word “Rode” is an Italian term used to indicate that someone is “gnawing”. This term is of average distinctive character for the goods and services involved. The red figurative element accompanying it is likely to be perceived by consumers essentially as a mere decorative element, and not as an element indicating the commercial origin of the goods. Therefore, it can be stated that the most distinctive element in the contested sign is the word “rode”.

Visually, the signs coincide in the fact that all the letters forming the verbal element “Rode” in the contested mark are contained in the earlier mark.

The use of upper or lowercase letters in word marks is not relevant in principle; normal use of the trade marks must be assumed. Thus, the earlier trade mark could be represented either as “RODEZ”, “rodez”, or with any other combination of upper and low-case letters. Consequently, the marks are visually similar to the extent that they share the sequence of letters “R-O-D-E” in the same order.

The elements where the coincidences are found constitute almost the entirety of the only element of the earlier mark (i.e. “RODEZ”), which is of average distinctiveness, and the dominant and most distinctive element of the contested mark (i.e. “Rode”).

The marks differ in the letter “Z” at the end of the earlier mark and in typeface and the red figurative element in the contested mark.

Regarding the impact of these differences for consumers trying to differentiate the signs, the typeface of the contested sign is not stylised enough as to per se help consumers to differentiate the signs.

The differing “Z” is found at the end of the earlier mark. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Accordingly, the differing “Z” is the last element catching the attention of the reader in the earlier mark.

Lastly, the red figurative element of the contested mark is of less visual impact than the verbal element accompanying it, for the reasons explained above.

According to the scenario described, the differing elements have reduced impact when assessing the similarity of signs. It is considered that the marks are visually similar to at least an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters “r-o-d-e”, present identically in both signs. The coinciding sequence constitutes the entire verbal element in the contested mark, which is aurally entirely contained in the earlier mark.

The pronunciation differs in the last letter of the earlier mark, “z”. This is read and pronounced in the last place, and does not constitute a strong sound. The red figurative element in the contested mark is not pronounced.

Therefore, the signs are considered to be aurally similar to a high degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the contested mark, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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

The signs are visually similar to at least an average degree, aurally highly similar and not conceptually similar.

The contested goods and services are partly identical, partly similar to a low degree and partly dissimilar to the opponent´s goods.

The attention paid by consumers is deemed to be lower than average, due to the characteristics of the goods and services involved.

As explained in the previous section, on the one hand, the differences between the marks are for various reasons considered to cause reduced impact when the marks are perceived. On the other hand, the coincidences between the marks are found in elements that constitute almost the entirety of the only element in the earlier mark, and the dominant and most distinctive element of the contested sign. In addition, the coinciding part constitutes the entire verbal element in the contested mark, which is aurally entirely contained in the earlier mark. Finally, the coincidences between the signs are confined to their initial parts/elements, where the consumer’s attention is generally focused, as pointed out above.

The level of attention paid by consumers during the purchase of the goods and services involved is deemed to be lower than average, as explained in section b). As a consequence of paying less attention, these consumers will more easily overlook the possible differences between the signs.

Having regard to the principle of interdependence, it is considered that the coincidences between the signs are enough to outweigh their dissimilarities, and may induce at least part of the public to believe that the conflicting goods and services found to be identical or similar to a low degree come from the same or economically-liked undertakings.

According to the principle of imperfect recollection, the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. Based on this, the consumers might believe that the conflicting goods and services found to be identical or similar (to a low degree) come from the same or economically-linked undertakings.

The above finding is maintained when referring to the part of the public paying a lower than average degree of attention during the purchase of the goods and services, since those consumers pay less attention to the marks, and therefore will more easily overlook the possible differences between them.

Also having regard to the principle of interdependence, it is considered that the coincidences between the signs outweigh their dissimilarities and may induce at least part of the public to believe that the conflicting goods and services found to be identical or similar (to a low degree) come from the same or economically-liked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Italian trade mark registration. It is considered that the contested sign must be rejected for all the contested goods found to be identical to those of the earlier trade mark, even for the contested services that are similar only to a low degree to the opponent’s goods. This is because, bearing in mind the interdependence principle, the moderate degree of similarity between those goods and services is clearly offset by, at least, an average degree of visual similarity and high degree of the aural similarity between the signs.

The rest of the contested services 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 services cannot be successful.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Martin MITURA

María del Carmen SUCH SANCHEZ

Richard BIANCHI

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.