SYNBIO | Decision 2234774 - Miles-Bramwell Executive Services Ltd v. Synbiotec S.r.l.

Date Published: Sep 22, 2017

OPPOSITION No B 2 234 774

Miles-Bramwell Executive Services Ltd, Clover Nook Road, Somercotes, Alfreton, Derbyshire DE55 4RF, United Kingdom (opponent), represented by Swindell & Pearson Ltd, 48 Friar Gate, Derby DE1 1GY, United Kingdom (professional representative)

a g a i n s t

Synbiotec S.r.l., Via Gentile III da Varano, 62032 Camerino MC, Italy (applicant).

On 18/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 234 774 is partially upheld, namely for the following contested goods:

Class 29:         Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; edible oils and fats; anchovy; ajvar [preserved peppers]; white of eggs; albumen for culinary purposes; salted meats; spiny lobsters, not live; herrings; broth; soups; fruit peel; game, not live; meat; meat, preserved; pork; caviar; gherkins; foods prepared from fish; onions, preserved; cranberry sauce [compote]; compotes; broth concentrates; shellfish, not live; jams; preserved garlic; meat, tinned [canned (am.)]; fruits, tinned [canned (am.)]; vegetables, tinned [canned (am.)]; fish, tinned [canned (am.)]; sauerkraut; silkworm chrysalis, for human consumption; croquettes; crustaceans, not live; dates; mussels, not live; non-alcoholic egg nog; meat extracts; soya beans, preserved, for food; fish meal for human consumption; beans, preserved; liver; fish fillets; potato flakes; cheese; potato fritters; fruit chips; frozen fruits; fruit, preserved; fruit preserved in alcohol; fruit, stewed; frosted fruits; mushrooms, preserved; shrimps, not live; prawns, not live; lobsters, not live; crayfish, not live; meat jellies; gelatine; jellies for food; fruit jellies; edible fats; coconut fat; hummus [chickpea paste]; vegetable soup preparations; kimchi [fermented vegetable dish]; bacon; vegetables, preserved; vegetables, cooked; vegetables, dried; lentils, preserved; fruit salads; vegetable salads; almonds, ground; marmalade; fatty substances for the manufacture of edible fats; animal marrow for food; fat-containing mixtures for bread slices; vegetable mousses; fish mousses; edible birds’ nests; coconut, desiccated; edible oils; olive oil for food; coconut oil; rape oil for food; sunflower oil for food; corn oil; palm kernel oil for food; bone oil, edible; palm oil for food; linseed oil for culinary purposes; sesame oil; olives, preserved; sea-cucumbers, not live; oysters, not live; tomato purée; liver pâté; potato chips; low-fat potato chips; fish, preserved; salted fish; peas, preserved; poultry, not live; fruit pulp; preparations for making bouillon; preparations for making soup; fish, not live; charcuterie; ham; apple purée; sausages; salmon; sausages in batter; black pudding; sardines; suet for food; fruit-based snack food; pickles; piccalilli; lard for food; vegetable juices for cooking; tomato juice for cooking; tahini [sesame seed paste]; truffles, preserved; tofu; tuna fish; tripe; yolk of eggs; eggs; snail eggs for consumption; processed fish spawn; powdered eggs; raisins; toasted laver; clams [not live]; ginger jam.

Class 30:         Coffee, tea, cocoa and artificial coffee; sugar, honey, treacle; salt; mustard; vinegar, sauces (condiments); spices; vinegar; beer vinegar; sea water for cooking; seaweed [condiment]; starch for food; aniseed; star aniseed; seasonings; coffee flavorings [flavourings]; flavorings, other than essential oils; flavorings, other than essential oils, for beverages; baking soda [bicarbonate of soda for cooking purposes]; puddings; cocoa; coffee; unroasted coffee; cinnamon [spice]; capers; cheeseburgers [sandwiches]; cloves [spice]; chow-chow [condiment]; chutneys [condiments]; chicory [coffee substitute]; aromatic preparations for food; condiments; fruit coulis [sauces]; cream of tartar for culinary purposes; turmeric for food; curry [spice]; natural sweeteners; garden herbs, preserved [seasonings]; mustard meal; meal; ham glaze; glucose for culinary purposes; infusions, not medicinal; thickening agents for cooking foodstuffs; ketchup [sauce]; binding agents for ice cream; mayonnaise; maltose; marinades; marzipan; molasses for food; mint for confectionery; honey; allspice; nutmegs; royal jelly; almond paste; soya bean paste [condiment]; pasties; pepper; pesto [sauce]; powders for ice cream; vegetal preparations for use as coffee substitutes; bee glue; relish [condiment]; cooking salt; celery salt; salt for preserving foodstuffs; tomato sauce; soya sauce; sauces [condiments]; dressings for salad; pasta sauce; sandwiches; peppers [seasonings]; golden syrup; mustard; spices; artificial coffee; meat gravies; tea; vanilla [flavoring] [flavouring]; vanillin [vanilla substitute]; saffron [seasoning]; ginger [spice]; sugar; palm sugar.

Class 31:         Agricultural, horticultural and forestry products not included in other classes; live animals; fresh fruits and vegetables; citrus fruit; algae for human or animal consumption; live animals; peanuts, fresh; spiny lobsters, live; oranges; lobsters, live; juniper berries; berries, fresh fruits; beet; sugarcane; locust beans; chestnuts, fresh; cucumbers, fresh; chicory [salad]; onions, fresh vegetables; shellfish, live; crustaceans, live; mussels, live; garden herbs, fresh; beans, fresh; fruit, fresh; mushrooms, fresh; crayfish, live; lettuce, fresh; vegetables, fresh; lentils, fresh; lemons, fresh; hops; almonds [fruits]; hazelnuts; coconuts; cola nuts; nuts [fruits]; olives, fresh; sea-cucumbers, live; oysters, live; potatoes, fresh; fish, live; peas, fresh; pollen [raw material]; leeks, fresh; rhubarb; roots for food; chicory roots; cocoa beans, raw; sesame; spinach, fresh; truffles, fresh; fish spawn; grapes, fresh; marrows.

Class 32:         Beers; mineral and aerated waters; syrups and other preparations for making beverages; seltzer water; waters [beverages]; table waters; aerated water; lithia water; mineral water [beverages]; malt beer; beer; essences for making beverages; non-alcoholic fruit extracts; extracts of hops for making beer; beer wort; malt wort; pastilles for effervescing beverages; powders for effervescing beverages; preparations for making beverages; preparations for making liqueurs; preparations for making aerated water; preparations for making mineral water; syrups for beverages; syrups for lemonade; soda water.

2.        European Union trade mark application No 11 715 794 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 all the goods and services of European Union trade mark application No 11 715 794 . The opposition is based on European Union trade mark registration No 9 207 771 ‘SYN’ and the non-registered trade mark ‘SYN’ used in the course of trade in the United Kingdom. The opponent invoked Article 8(1)(b), 8(4) and 8(5) 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 and services

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

Class 16:         Printed matter; magazines; periodical publications; newsletters; books; booklets; leaflets; recipes; directories; photographs; stationery; pamphlets; charts.

Class 29:         Food and food products in class 29; snack foods; prepared and packaged meals and foods; meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies; jams; eggs, milk and milk products; edible oils and fats; preserves.

Class 30:         Food and food products in class 30; coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, snack foods, prepared and packaged foods, pastry products, confectionery, ices, ice creams, honey, treacle, yeast, baking powder, salt, mustard, vinegar, sauces, salad dressings, spices.

Class 32:        Beers, mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices, syrups and other preparations for making beverages.

Class 41:        Education services; training services; arranging and conducting educational and training seminars and classes; education, training and arranging and conducting seminars and classes relating to slimming, weight control, diet, dieting, exercise, fitness, recreation and health; services for the provision of exercise equipment; health club services; fitness club services; health and fitness services; exercise services; education and advice relating to physical fitness; exercise; physical fitness centres; fitness and exercise instruction; fitness and exercise training services, exercise and fitness classes; advisory and counselling services relating to fitness and recreation.

Class 44:        Advisory, counselling and consultancy services relating to slimming, weight control, diet, dieting, exercise, eating habits, health, lifestyle (for medical/healthcare purposes) and well-being (healthcare); slimming salon services; slimming treatment services.

The contested goods and services are the following:

Class 29:        Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; edible oils and fats; anchovy; ajvar [preserved peppers]; white of eggs; albumen for culinary purposes; alginates for culinary purposes; salted meats; spiny lobsters, not live; herrings; broth; soups; fruit peel; game, not live; meat; meat, preserved; pork; caviar; gherkins; foods prepared from fish; onions, preserved; cranberry sauce [compote]; compotes; broth concentrates; shellfish, not live; jams; preserved garlic; meat, tinned [canned (am.)]; fruits, tinned [canned (am.)]; vegetables, tinned [canned (am.)]; fish, tinned [canned (am.)]; sauerkraut; silkworm chrysalis, for human consumption; croquettes; crustaceans, not live; dates; mussels, not live; non-alcoholic egg nog; meat extracts; soya beans, preserved, for food; fish meal for human consumption; beans, preserved; liver; fish fillets; potato flakes; cheese; potato fritters; fruit chips; frozen fruits; fruit, preserved; fruit preserved in alcohol; fruit, stewed; frosted fruits; mushrooms, preserved; shrimps, not live; prawns, not live; lobsters, not live; crayfish, not live; meat jellies; gelatine; jellies for food; fruit jellies; edible fats; coconut fat; hummus [chickpea paste]; isinglass for food; vegetable soup preparations; kimchi [fermented vegetable dish]; bacon; vegetables, preserved; vegetables, cooked; vegetables, dried; lentils, preserved; fruit salads; vegetable salads; almonds, ground; marmalade; fatty substances for the manufacture of edible fats; animal marrow for food; fat-containing mixtures for bread slices; vegetable mousses; fish mousses; edible birds’ nests; coconut, desiccated; edible oils; olive oil for food; coconut oil; rape oil for food; sunflower oil for food; corn oil; palm kernel oil for food; bone oil, edible; palm oil for food; linseed oil for culinary purposes; sesame oil; olives, preserved; sea-cucumbers, not live; oysters, not live; tomato purée; liver pâté; potato chips; low-fat potato chips; pectin for culinary purposes; fish, preserved; salted fish; peas, preserved; poultry, not live; fruit pulp; preparations for making bouillon; preparations for making soup; rennet; fish, not live; charcuterie; ham; apple purée; sausages; salmon; sausages in batter; black pudding; sardines; suet for food; fruit-based snack food; pickles; piccalilli; lard for food; vegetable juices for cooking; tomato juice for cooking; tahini [sesame seed paste]; truffles, preserved; tofu; tuna fish; tripe; yolk of eggs; eggs; snail eggs for consumption; processed fish spawn; powdered eggs; raisins; toasted laver; clams [not live]; ginger jam.

Class 30:        Coffee, tea, cocoa and artificial coffee; sugar, honey, treacle; salt; mustard; vinegar, sauces (condiments); spices; ice; vinegar; beer vinegar; sea water for cooking; gluten additives for culinary purposes; seaweed [condiment]; starch for food; aniseed; star aniseed; seasonings; coffee flavorings [flavourings]; flavorings, other than essential oils; flavorings, other than essential oils, for beverages; flavorings, other than essential oils, for cakes; baking soda [bicarbonate of soda for cooking purposes]; puddings; cocoa; coffee; unroasted coffee; cinnamon [spice]; capers; cheeseburgers [sandwiches]; cloves [spice]; chow-chow [condiment]; chutneys [condiments]; chicory [coffee substitute]; aromatic preparations for food; condiments; fruit coulis [sauces]; cream of tartar for culinary purposes; turmeric for food; curry [spice]; natural sweeteners; garden herbs, preserved [seasonings]; essences for foodstuffs, except etheric essences and essential oils; mustard meal; meal; ham glaze; ice, natural or artificial; ice for refreshment; glucose for culinary purposes; gluten prepared as foodstuff; chewing gum; infusions, not medicinal; thickening agents for cooking foodstuffs; ketchup [sauce]; binding agents for ice cream; sausage binding materials; mayonnaise; maltose; marinades; marzipan; molasses for food; mint for confectionery; honey; allspice; nutmegs; royal jelly; almond paste; soya bean paste [condiment]; pasties; pepper; pesto [sauce]; powders for ice cream; vegetal preparations for use as coffee substitutes; meat tenderizers, for household purposes; preparations for stiffening whipped cream; bee glue; relish [condiment]; cooking salt; celery salt; salt for preserving foodstuffs; tomato sauce; soya sauce; sauces [condiments]; dressings for salad; pasta sauce; sandwiches; peppers [seasonings]; golden syrup; mustard; spices; artificial coffee; meat gravies; tea; vanilla [flavoring] [flavouring]; vanillin [vanilla substitute]; saffron [seasoning]; ginger [spice]; sugar; palm sugar.

Class 31:        Agricultural, horticultural and forestry products not included in other classes; live animals; fresh fruits and vegetables; natural plants and flowers; foodstuffs for animals; citrus fruit; Christmas trees; trees; algarovilla for animal consumption; algae for human or animal consumption; animal foodstuffs; fodder; bird food; menagerie animals; live animals; peanuts, fresh; spiny lobsters, live; oranges; bushes; lobsters, live; juniper berries; berries, fresh fruits; silkworms; bagasses of cane [raw material]; beet; beverages for pets; mushroom spawn for propagation; dog biscuits; lime for animal forage; sugarcane; locust beans; sanded paper for pets [litter]; chestnuts, fresh; vine plants; cucumbers, fresh; chicory [salad]; bulbs; onions, fresh vegetables; shellfish, live; hop cones; copra; wreaths of natural flowers; crustaceans, live; mussels, live; garden herbs, fresh; fishing bait, live; peanut meal for animals; flax meal [fodder]; linseed meal for animal consumption; fish meal for animal consumption; rice meal for forage; meal for animals; beans, fresh; hay; flowers, natural; flowers, dried, for decoration; fruit, fresh; mushrooms, fresh; crayfish, live; seed germ for botanical purposes; wheat germ for animal consumption; coconut shell; lettuce, fresh; undressed timber; unsawn timber; vegetables, fresh; lentils, fresh; yeast for animal consumption; lemons, fresh; hops; malt for brewing and distilling; almonds [fruits]; pet food; stall food for animals; hazelnuts; coconuts; cola nuts; nuts [fruits]; edible chews for animals; olives, fresh; sea-cucumbers, live; nettles; cuttle bone for birds; oysters, live; straw mulch; straw [forage]; straw litter; palm trees; palms [leaves of the palm tree]; oil cake; peanut cake for animals; rape cake for cattle; maize cake for cattle; mash for fattening livestock; bran mash for animal consumption; potatoes, fresh; peppers [plants]; fish, live; plants; aloe vera plants; plants, dried, for decoration; seedlings; pine cones; peas, fresh; poultry, live; pollen [raw material]; leeks, fresh; bred stock; animal fattening preparations; preparations for egg laying poultry; products for animal litter; rhubarb; roots for food; chicory roots; residual products of cereals for animal consumption; distillery waste for animal consumption; rose bushes; aromatic sand for pets [litter]; salt for cattle; raw barks; rye; linseed for animal consumption; cocoa beans, raw; grains for animal consumption; groats for poultry; sesame; strengthening animal forage; spinach, fresh; rough cork; sod; truffles, fresh; litter peat; draff; trunks of trees; wood chips for the manufacture of wood pulp; eggs for hatching, fertilised; fish spawn; silkworm eggs; grapes, fresh; residue in a still after distillation; marc; marrows.

Class 32:        Beers; mineral and aerated waters; syrups and other preparations for making beverages; seltzer water; waters [beverages]; table waters; aerated water; lithia water; mineral water [beverages]; malt beer; beer; essences for making beverages; non-alcoholic fruit extracts; extracts of hops for making beer; beer wort; malt wort; pastilles for effervescing beverages; powders for effervescing beverages; preparations for making beverages; preparations for making liqueurs; preparations for making aerated water; preparations for making mineral water; syrups for beverages; syrups for lemonade; soda water.

Class 35:        Advertising; business management; business administration; office functions; promotion; franchising, namely consultancy and assistance in business management, organization and promotion.

An interpretation of the wording of the applicant’s list of goods and services is required to determine the scope of protection of these goods and services. The term ‘namely’ is used to show the relationship of individual services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 meat, fish, poultry and game; anchovy; salted meats; spiny lobsters, not live; herrings; game, not live; meat; meat, preserved; pork; caviar; shellfish, not live; meat, tinned [canned (am.)]; fish, tinned [canned (am.)]; silkworm chrysalis, for human consumption; crustaceans, not live; mussels, not live; fish meal for human consumption; liver; fish fillets; shrimps, not live; prawns, not live; lobsters, not live; crayfish, not live; bacon; animal marrow for food; sea-cucumbers, not live; oysters, not live; liver pâté; fish, preserved; salted fish; poultry, not live; fish, not live; charcuterie; ham; sausages; salmon; sausages in batter; black pudding; sardines; suet for food; tuna fish; tripe; processed fish spawn; clams [not live] are identically included in the opponent’s list of goods or are included in the opponent’s broader category meat, fish, poultry and game. Therefore, they are identical.

The contested preserved, frozen, dried and cooked fruits and vegetables; jellies, jams; compotes; ajvar [preserved peppers]; fruit peel; gherkins; onions, preserved; cranberry sauce [compote]; compotes; jams; preserved garlic; fruits, tinned [canned (am.)]; vegetables, tinned [canned (am.)]; sauerkraut; dates; soya beans, preserved, for food; beans, preserved; potato flakes; potato fritters; fruit chips; frozen fruits; fruit, preserved; fruit preserved in alcohol; fruit, stewed; frosted fruits; mushrooms, preserved; meat jellies; gelatine; jellies for food; fruit jellies; hummus [chickpea paste]; kimchi [fermented vegetable dish]; vegetables, preserved; vegetables, cooked; vegetables, dried; lentils, preserved; fruit salads; vegetable salads; almonds, ground; marmalade; coconut, desiccated; olives, preserved; tomato purée; potato chips; low-fat potato chips; peas, preserved; fruit pulp; apple purée; fruit-based snack food; pickles; piccalilli; vegetable juices for cooking; tomato juice for cooking; tahini [sesame seed paste]; truffles, preserved; tofu; raisins; ginger jam are identically included in the opponent’s list of goods, are included in the opponent’s broader categories preserved, dried and cooked fruits and vegetables; jellies; jams; preserves or overlap with these broader categories. Therefore, they are identical.

The contested meat extracts and eggs (both listed twice) are identically included in the opponent’s list of goods. Moreover, the contested snail eggs for consumption; powdered eggs are included in the opponent’s broader category eggs. Therefore, they are identical.

The contested edible oils and fats; edible fats; coconut fat; fatty substances for the manufacture of edible fats; fat-containing mixtures for bread slices; edible oils; olive oil for food; coconut oil; rape oil for food; sunflower oil for food; corn oil; palm kernel oil for food; bone oil, edible; palm oil for food; linseed oil for culinary purposes; sesame oil; lard for food overlap with or are included in the opponent’s broader category edible oils and fats. Therefore, they are identical.

The contested cheese is included in the opponent’s broader category milk products. The contested non-alcoholic egg nog, which is a creamy dairy-based beverage traditionally made with milk, cream, sugar and beaten eggs, is also included in the opponent’s broader category milk products. Therefore, they are identical.

The contested toasted laver is included in the opponent’s broader category snack foods. Therefore, they are identical.

The contested broth; soups; foods prepared from fish; broth concentrates; croquettes; vegetable soup preparations; vegetable mousses; fish mousses; edible birds’ nests; preparations for making bouillon; preparations for making soup can be considered included in the opponent’s broader category prepared and packaged meals and foods and thus they are identical.

The contested white of eggs; albumen for culinary purposes; yolk of eggs are similar to the opponent’s eggs, as these goods have the same nature and producers. Moreover, they target the same public. In addition, the contested yolk of eggs and the opponent’s eggs are also distributed through the same channels.

The contested alginates for culinary purposes; pectin for culinary purposes are used as gelling agents; the contested rennet is used to separate milk into solid curds, for cheese making, and liquid whey, and the contested isinglass for food is a clarifying agent. Therefore, these are not end products and could not be directly consumed by the public. They are dissimilar to the opponent’s goods in Classes 29, 30 and 32. Even though some of the opponent’s goods, for instance yeast, are not end products, these goods have a different purpose from the contested goods. They are not distributed through the same channels and cannot be found in the same departments or sections of supermarkets. They are neither in competition with nor complementary to each other.

The contested alginates for culinary purposes; pectin for culinary purposes; rennet; isinglass for food are also dissimilar to the opponent’s remaining goods and services, in Classes 16, 41 and 44, which are basically printed matter and stationery, and education, training and healthcare services. These goods and services have nothing in common: they have different natures, purposes, commercial origins and methods of use. Moreover, they are neither complementary to nor in competition with each other, and they target different publics.

Contested goods in Class 30

Coffee, tea, cocoa and artificial coffee; sugar, honey, treacle; salt; mustard; vinegar; sauces (condiments); dressings for salad; spices (some of the aforesaid goods listed twice) are identically included in both lists of goods (including synonyms).

The contested unroasted coffee is included in the opponent’s broader category coffee. Likewise, the contested chicory [coffee substitute]; vegetal preparations for use as coffee substitutes are included in the opponent’s broader category artificial coffee. They are identical.

The contested palm sugar is included in the opponent’s broader category sugar and the contested cooking salt; celery salt; salt for preserving foodstuffs are included in the opponent’s broader category salt. Moreover, the contested beer vinegar is included in the opponent’s broader category vinegar. Therefore, they are identical.

The contested meal; mustard meal are synonyms with or included in the opponent’s broader category flour. Consequently, they are identical.

The contested aniseed; star aniseed; cinnamon [spice]; cloves [spice]; turmeric for food; curry [spice]; allspice; nutmegs; pepper; peppers [seasonings]; saffron [seasoning]; ginger [spice] are included in the opponent’s broader category spices. Furthermore, the contested golden syrup; molasses for food are included in the opponent’s treacle. Therefore, they are identical.

The contested seasonings; condiments include, as broader categories, the opponent’s salt. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested infusions, not medicinal overlap with the opponent’s tea and the contested natural sweeteners; glucose for culinary purposes; maltose overlap with the opponent’s sugar. Therefore, they are identical.

The contested ham glaze; ketchup [sauce]; mayonnaise; pesto [sauce]; tomato sauce; soya sauce; sauces [condiments]; pasta sauce; meat gravies; fruit coulis [sauces] are included in the opponent’s broader category sauces. Likewise, the contested cheeseburgers [sandwiches]; sandwiches; pasties; puddings are included in, or overlap with, the opponent’s broader category snack foods, prepared and packaged foods. Therefore, they are identical.

The contested marzipan is included in the opponent’s confectionery, as the latter includes not only chocolates but also sweets. They are identical.

The contested capers; marinades are highly similar to the opponent’s preserved vegetables. They have the same nature, purpose and distribution channels and they target the same public.

The contested baking soda [bicarbonate of soda for cooking purposes] and the opponent’s baking powder share the same purpose, channels of distribution, public and producer. They are goods in competition with each other. For these reasons, they are similar to a high degree.  

The contested sea water for cooking; seaweed [condiment]; chow-chow [condiment]; chutneys [condiments]; aromatic preparations for food; garden herbs, preserved [seasonings]; soya bean paste [condiment]; relish [condiment]; mint for confectionery vanilla [flavoring] [flavouring]; vanillin [vanilla substitute] are similar to the opponent’s spices, as these goods have similar purposes, that is, adding a particular flavour to or enhancing the flavour of food. They are distributed through the same channels, target the same public and may have the same commercial origin.

The contested starch for food may have the same consistency as the opponent’s flour and is used to thicken other foodstuffs, on account of its starch content. These goods are deemed to be similar, since they can be in competition and they have the same producers, end users and distribution channels. The same reasoning is applicable to the contested thickening agents for cooking foodstuffs, and therefore they are also similar to the opponent’s flour.

The contested bee glue; royal jelly are similar to the opponent’s honey, as they have the same distribution channels, target the same public and are produced by the same companies, due to their common animal origin.

The contested binding agents for ice cream; powders for ice cream are similar to the opponent’s ice creams, since they have the same purpose. They can also have the same end users and distribution channels. Furthermore, they are in competition.

The contested cream of tartar for culinary purposes is similar to the opponent’s yeast, as both can be used as a leavener. They have the same distribution channels and target the same public.

The contested almond paste is similar to a low degree to the opponent’s confectionery, as some confectionery goods, for instance marzipan, consist mainly of almond. Therefore, these goods have the same nature, namely they are goods made of almonds. Moreover, they target the same public and are produced by the same companies.

The contested coffee flavourings [flavourings]; flavourings, other than essential oils; flavourings, other than essential oils, for beverages are similar to a low degree to the opponent’s syrups and other preparations for making beverages, as the latter may include flavouring syrups. They have similar purposes, namely adding flavour. Moreover, they target the same public and are distributed through the same channels.

The contested ice; ice, natural or artificial; ice for refreshment consist of frozen water and are used as auxiliary products for preserving and/or cooling foodstuffs. The contested chewing gum is a flavoured substance designed to be chewed without being swallowed. These contested goods are dissimilar to all of the opponent’s goods and services, since their purposes and distribution channels are different. Their producers are usually different as well. Furthermore, they are neither in competition nor complementary.

Finally, the contested gluten additives for culinary purposes; gluten prepared as foodstuff; essences for foodstuffs, except etheric essences and essential oils; flavourings, other than essential oils, for cakes; sausage binding materials; meat tenderizers, for household purposes; preparations for stiffening whipped cream (stiffening agents for culinary purposes) are dissimilar to the opponent’s goods in Classes 29, 30 and 32. The contested goods are not end products intended for human consumption but are ingredients or agents used in the production of foodstuffs. The contested goods have a different commercial origin from the opponent’s goods, serve a specific purpose and in principle target mainly companies operating in the food and beverage industry; consequently they target a specialised relevant public different from the public targeted by the opponent’s goods. Moreover, the contested goods also differ from the opponent’s remaining goods and services, in Classes 16, 41 and 44, as they do not have anything relevant in common: they have different natures, purposes, distribution channels and commercial origins.

Contested services in Class 31

The contested agricultural, horticultural and forestry products not included in other classes; fresh fruits and vegetables; citrus fruit; algae for human or animal consumption; peanuts, fresh; oranges; juniper berries; berries, fresh fruits; beet; sugarcane; chestnuts, fresh; cucumbers, fresh; chicory [salad]; locust beans; onions, fresh vegetables; beans, fresh; fruit, fresh; mushrooms, fresh; lettuce, fresh; vegetables, fresh; lentils, fresh; lemons, fresh; almonds [fruits]; coconuts; hazelnuts; cola nuts; nuts [fruits]; olives, fresh; potatoes, fresh; peas, fresh; leeks, fresh; rhubarb; sesame; roots for food; spinach, fresh; truffles, fresh; grapes, fresh; marrows are similar to a low degree to the opponent’s preserved, dried and cooked fruits and vegetables, since these goods are in competition with each other, target the same public and are distributed through the same channels.

The contested garden herbs, fresh are similar to a low degree to the opponent’s spices, as these goods have the same purpose, namely flavouring. Moreover, they are distributed through the same channels and target the same public.

The contested chicory roots and cocoa beans, raw are similar to a low degree to the opponent’s coffee and cocoa, respectively, as they have similar purposes, are in competition with each other and target the same consumers.

The contested live animals (listed twice); spiny lobsters, live; lobsters, live; shellfish, live; crustaceans, live; mussels, live; crayfish, live; sea-cucumbers, live; oysters, live; fish, live; fish spawn are similar to a low degree to the opponent’s fish, since these goods have the same distribution channels and producers.

The contested pollen [raw material] is similar to a low degree to the opponent’s honey, since these goods have the same producers and are distributed through the same channels.

The remaining contested goods, namely natural plants and flowers; foodstuffs for animals; Christmas trees; trees; algarovilla for animal consumption; animal foodstuffs; fodder; bird food; menagerie animals; bushes; silkworms; bagasses of cane [raw material]; beverages for pets; mushroom spawn for propagation; dog biscuits; lime for animal forage; sanded paper for pets [litter]; vine plants;  bulbs; hop cones; copra; wreaths of natural flowers; fishing bait, live; peanut meal for animals; flax meal [fodder]; linseed meal for animal consumption; fish meal for animal consumption; rice meal for forage; meal for animals; hay; flowers, natural; flowers, dried, for decoration; seed germ for botanical purposes; wheat germ for animal consumption; coconut shell; undressed timber; unsawn timber; yeast for animal consumption; hops; malt for brewing and distilling; pet food; stall food for animals; edible chews for animals; nettles; cuttle bone for birds; straw mulch; straw [forage]; straw litter; palm trees; palms [leaves of the palm tree]; oil cake; peanut cake for animals; rape cake for cattle; maize cake for cattle; mash for fattening livestock; bran mash for animal consumption; peppers [plants]; plants; aloe vera plants; plants, dried, for decoration; seedlings; pine cones; poultry, live; bred stock; animal fattening preparations; preparations for egg laying poultry; products for animal litter; residual products of cereals for animal consumption; distillery waste for animal consumption; rose bushes; aromatic sand for pets [litter]; salt for cattle; raw barks; rye; linseed for animal consumption; grains for animal consumption; groats for poultry; strengthening animal forage; rough cork; sod; litter peat; draff; trunks of trees; wood chips for the manufacture of wood pulp; eggs for hatching, fertilised;; silkworm eggs; residue in a still after distillation; marc, are dissimilar to all of the opponent’s goods and services. They have completely different purposes and, in the case of the services, different natures. They target different publics, are distributed through different channels and have different commercial origins. Their producers are also different. Furthermore, they are neither complementary nor in competition.

Contested goods in Class 32

Beers; mineral and aerated waters; syrups and other preparations for making beverages (some listed twice) are identically included in both lists of goods (including synonyms).

The contested seltzer water; waters [beverages]; table waters; lithia water; mineral water [beverages]; soda water; beer wort; malt wort are included in the opponent’s broader category mineral and aerated waters or, in the case of wort, other non-alcoholic drinks. Likewise, the contested malt beer is included in the opponent’s broader category beers. Therefore, they are identical.

The contested non-alcoholic fruit extracts are included in the opponent’s broader category fruit drinks and fruit juices and the contested essences for making beverages; extracts of hops for making beer; pastilles for effervescing beverages; powders for effervescing beverages; preparations for making beverages; preparations for making liqueurs; preparations for making aerated water; preparations for making mineral water; syrups for beverages; syrups for lemonade are included in the opponent’s broader category syrups or other preparations for making beverages. These goods are therefore identical.

Contested services in Class 35

Advertising consists of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. It is fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Therefore, advertising; promotion are dissimilar to the goods or services that they advertise or promote. The same applies to the comparison of advertising services with goods that can be used as a medium for disseminating advertising, such as printed matter in Class 16. The contested advertising and the opponent’s goods and services, which are mainly printed matter and stationery in Class 16, foodstuffs and beverages in Classes 29, 30 and 32, education services in Class 41 and beauty care services in Class 44, are therefore dissimilar. They have different natures and/or completely different purposes. Their producers/providers are usually different. They target different publics and are distributed or rendered through different channels. They are neither in competition nor complementary.

Business management; business administration; franchising, namely consultancy and assistance in business management, organization and promotion are usually rendered by specialist companies, such as business consultants, and consist of gathering information and providing tools and expertise to professional customers to carry out their business and/or of providing businesses with the necessary support to acquire, develop and expand market share. The contested office functions cover ‘back office’ administration and support services. These contested services have nothing relevant in common with the opponent’s goods and services: they differ in their natures and purposes and they are neither complementary to nor in competition with each other. They target different publics and are distributed through different channels. Moreover, their producers/providers are usually different. Therefore, they are dissimilar.

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 identical or similar to various degrees are directed at the public at large with an average degree of attention.

3. The signs

SYN
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 earlier sign is a three-letter word mark with no meaning in relation to the relevant goods. It has no elements that could be considered more distinctive than other elements.

As a word mark, it is the word ‘SYN’ itself that is protected and not the way in which it is depicted. Therefore, its depiction in upper case characters has no impact on the visual comparison.

The contested sign is a figurative mark composed of the word ‘synbio’ in a slightly stylised typeface and, on its right-hand side, a hexagonal device composed of rhomboids in shades of grey.

The contested sign is composed of an arbitrary verbal element that does not exist as such in the relevant languages, for example in English, German, Spanish or Italian. However, the Court has held that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).

In the present case, the contested sign contains the letter sequence ‘BIO’, which may be perceived by part of the relevant public as referring to ‘biological’ (i.e. relating to biology, which is the study of living plants and animals) and this part of the public will therefore perceive it as indicating ‘something of a natural or biological origin’. Considering this, and bearing in mind that the relevant goods are foodstuffs and beverages, this element is non-distinctive for all the goods, as it describes their nature or manufacturing process. The public that understands the meaning of this element will not pay as much attention to this descriptive element as to the other, more distinctive, elements of the mark. Consequently, the impact of this descriptive element is limited when assessing the likelihood of confusion between the marks at issue.

The analysis of the opposition will focus on this part of the public that perceives the meaning of the word ‘BIO’ in the contested sign.

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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Neither of the signs has any element that could be considered clearly more dominant than other elements.

Visually and aurally, the signs coincide in the letters/phonemes ‘SYN’ and differ in the non-distinctive element ‘BIO’ of the contested mark. Visually, the signs also differ in the figurative element of the contested sign. However, it has to be taken into account 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 and aurally highly similar.

Conceptually, the public in the relevant territory will perceive the meaning of ‘BIO’ in the contested sign, as explained above, whereas 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. However, since this difference lies in a non-distinctive element, its impact is very limited.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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

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). Moreover, 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).

In addition, 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.

Having regard to the identity or similarity (to various degrees) between the goods, the high degree of visual and aural similarity between the signs and the average degree of distinctiveness of the earlier mark, and bearing in mind the average degree of attention of the public and the imperfect recollection of the average consumer, there is a likelihood of confusion between the marks on the part of the relevant public.

Considering all the above, there is a likelihood of confusion at least on the part of the public that perceives the meaning of the word ‘BIO’ in the contested sign. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar (to various degrees) to those of the earlier trade mark, even for those goods deemed to be similar to a low degree.

The rest of the contested goods and 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 goods and services cannot be successful.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

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 will be 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)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 03/09/2013 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit was extended and expired on 15/11/2015.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as this ground is concerned.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a)        rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b)        that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.

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 will be 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 the present case the notice of opposition was not accompanied by any evidence of use of the earlier sign in the course of trade.

As already mentioned, on 03/09/2013 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit was extended and expired on 15/11/2015.

The opponent did not submit any evidence of use in the course of trade of the earlier sign on which the opposition is based.

Given that one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded insofar as this ground is concerned.

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

Michael KRUK

Ana MUÑIZ RODRIGUEZ

Claudia ATTINÀ

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.