(Trade mark without text) | Decision 2698515
Date Published: Sep 28, 2017
OPPOSITION No B 2 698 515
Azimut Consulting Tanácsadó Kft., Kossut tér 16 I/7, Hatvan 3000, Hungary (opponent), represented by Interinno Szabadalmi Iroda, Margit krt. 73, 1024 Budapest, Hungary (professional representative)
a g a i n s t
GG Handel i Skara AB, Box 44, 532 21 Skara, Sweden (applicant), represented by Wistrand Advokatbyrå, Lilla Bommen 1, 411 04 Göteborg, Sweden (professional representative).
On 02/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 698 515 is upheld for all the contested goods.
2. European Union trade mark application No 15 103 765 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 15 103 765, namely against all the goods in Classes 29, 30 and 31. The opposition is based on, inter alia, European Union trade mark registration No 2 748 481. The opponent invoked Article 8(1)(b) and Article 8(4) EUTMR.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 2 748 481.
- The goods
The goods on which the opposition is based are the following:
Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats.
Class 32: Beers; mineral and carbonated waters and other soft drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.
The contested goods are the following:
Class 29: Vegetables, tinned [canned (am.)]; tomato paste; tomato concentrates [puree]; tomato preserves; condensed tomatoes; processed tomatoes; tomato juice for cooking; vegetables, dried; processed vegetables; vegetables, preserved; vegetables, cooked; preserved vegetables.
Class 30: Catsup; tomato sauce; vegetable purees [sauces]; sauces; canned sauces.
Class 31: Vegetables, fresh; fresh tomatoes.
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 vegetables, dried are identically contained in both lists of goods.
The contested vegetables, preserved; preserved vegetables are identically contained in both lists of goods.
The contested vegetables, cooked are identically contained in both lists of goods.
The contested tomato preserves are included in the broad category of the opponent’s preserved vegetables. Therefore, they are identical.
The contested vegetables, tinned [canned (Am.)]; condensed tomatoes are vegetable products which have been treated in a particular way (canning and water extraction respectively), so that they can be kept for a longer time without going bad. They are included in the broad category of the opponent’s preserved vegetables. Therefore, they are identical.
The contested processed tomatoes; tomato paste; tomato concentrates [puree]; tomato juice for cooking; processed vegetables are prepared vegetable products. They are included in the broad category of the opponent’s preserved vegetables. Therefore, they are identical.
Contested goods in Class 30
The contested catsup; tomato sauce; vegetable purees [sauces]; sauces; canned sauces are all sauces and condiments which are similar to a high degree to the opponent´s preserved vegetables, because they share the same purpose, are in competition with each other and coincide in their pertinent distribution channels, producer and relevant public.
Contested goods in Class 31
The contested vegetables, fresh; fresh tomatoes are similar to a low degree to the opponent´s fruit juices in Class 32. Although the former are unprocessed and the latter processed, they can coincide in producer, end user and distribution channels.
- 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 will be at most average for these inexpensive and frequently purchased goods.
- The signs
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 trade mark includes the registered trade mark symbol, ®. This is an informative indication that the sign is purportedly registered, and is not part of the trade mark as such. Consequently, this will not be taken into consideration for the purposes of comparison.
The contested mark is a figurative sign consisting of a stylised pheasant in black and gold in side profile. The depiction of a pheasant is not descriptive, allusive or otherwise weak for the relevant goods. Therefore, it is distinctive.
The earlier mark also depicts a stylised pheasant in black and gold from the same perspective, and in the same stance. It is set against a decorative, red background which is not distinctive. Again, the stylised pheasant is not descriptive, allusive or otherwise weak for the relevant goods. It is, therefore, distinctive.
Visually, the signs coincide in the virtually identical stylised representation of the pheasant, which is distinctive. The signs differ in that the earlier sign features a red background. It is a non-distinctive component, being purely decorative.
Therefore, the signs are highly similar.
Aurally, purely figurative signs are not subject to a phonetic assessment. As both signs are purely figurative, it is not possible to compare them aurally.
Conceptually, as both signs will be perceived as depicting a pheasant (this coinciding element being distinctive), and as the non-distinctive differing element of the earlier sign does not introduce a conceptual difference, the signs are conceptually identical.
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.
According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).
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, despite the presence of a non-distinctive element in the mark as stated above in section c) of this decision.
- 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).
The contested goods have been found partially identical and partially similar to goods covered by the earlier mark. The earlier mark is deemed to have a normal degree of distinctiveness. The signs differ in that the earlier sign features a red background. It is a non-distinctive component, being purely decorative.
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).
Considering all the above, the differing non-distinctive element is not sufficient for the relevant public to hold the signs apart and there is a likelihood of confusion on the part of the public (even when displaying an average degree of attentiveness). Considering the interdependence principle, the Opposition Division is of the opinion that, in view of the high similarity between the signs, there is a likelihood of confusion also for the goods found to be similar to a low degree only.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 2 748 481 pursuant to Article 8(1)(b) EUTMR.
It follows that the contested trade mark must be rejected for all the contested goods.
Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
As the earlier European Union trade mark registration No 2 748 481 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(1)(4) EUTMR.
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
Biruté SATAITE-GONZALEZ | Keeva DOHERTY | Denitza STOYANOVA-VALCHANOVA |
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.