YOGREKO | Decision 2684580
Date Published: Sep 24, 2017
OPPOSITION No B 2 684 580
Routhier Weber Handelsgesellschaft mbH, Finkenweg 2, 63674 Altenstadt, Germany (opponent), represented by Wagner Albiger & Partner Patentanwälte mbB, Siegfried-Leopold-Str. 27, 53225 Bonn, Germany (professional representative)
a g a i n s t
Manuzzi Import Export SRL, via Cervese 373/B, 47521 Cesena, Italy (applicant), represented by Agazzani & Associati S.R.L., Via dell'Angelo Custode, 11/6, 40141 Bologna, Italy (professional representative).
On 31/08/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 684 580 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 14 952 196:
namely against some of the goods in Classes 29 and 32:
The opposition is based on European Union trade mark registration No 3 840 832:
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 29: Milk products, namely cheese, quark, yoghurt.
The contested goods are the following:
Class 29: Milk and milk products; Yoghurt; Cheese products, Feta cheese, Curd cheese, Butter, Cream (dairy products); Drinks made from dairy products; Yoghurt creams; spreads and desserts containing milk products; Fruit- and yoghurt-based desserts; Cheese-based sauces and condiments.
Class 32: Non-alcoholic drinks.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed.
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.
Contested goods in Class 29
Yoghurt is identically contained in both lists of goods.
The contested milk and milk products include, as broader categories the opponent’s milk products, namely cheese, quark, yoghurt. 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 cheese products include as a broader category the opponent’s milk products, namely cheese. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested feta cheese, curd cheese are included in the broad categories of the opponent’s milk products, namely cheese. Therefore, they are identical.
The contested butter, cream (dairy products); drinks made from dairy products; yoghurt creams are similar to the opponent’s milk products, namely cheese, quark, yoghurt. The nature of these products is the same as they are all made from milk. The distribution channels and relevant public coincide and they are often produced by the same companies.
The contested spreads and desserts containing milk products; fruit- and yoghurt-based desserts; cheese-based sauces and condiments are similar to the opponent’s milk products, namely cheese, quark, yoghurt. The nature of these products is the same as they are products that contain milk. The distribution channels and relevant public coincide and they are often produced by the same companies.
Contested goods in Class 32
The contested non-alcoholic drinks are similar to the opponent’s milk products, namely yoghurt in Class 29. The purpose of the goods may coincide in that they may be consumed as refreshments. The relevant public and distribution channels coincide and these goods are considered to be in competition.
- 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.
Given that these goods are fast moving consumer goods that are purchased frequently and are not particularly expensive, the degree of attention is considered to vary between average and low.
- 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 mark is composed of the word element ‘greco’ which means ‘Greek’ in some European languages, namely Spanish and Italian. Therefore it has a meaning for part of the relevant public and is non-distinctive for that part of the relevant public as it is descriptive of the origin of the goods. For the remainder of the relevant public ‘greco’ has no meaning and so is distinctive. The verbal element is depicted in a black hand-written typeface. Above is a red figurative device that looks hand-drawn. Spatters of red and black ink around the sign add to its hand-drawn style and will be seen as decorative. They are less dominant than the other elements. The figurative element has no meaning in relation to the goods at hand and so is distinctive.
The contested sign has the word element ‘YOGREKO’ which has no meaning in any part of the relevant territory. Therefore it is distinctive. The verbal element, which is the dominant element, appears in a navy capital standard typeface, above and below which appear two light blue curved lines that frame the word element and are not particularly striking or distinctive.
When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.
The element ‘greco’ is descriptive for the part of the public that speak Spanish and Italian as indicating ‘Greek’ as the origin of the goods in question. Therefore it is non- distinctive for this part of the public for the goods in question. However, for the other part of the public, it has no meaning and is distinctive.
The Opposition Division will first examine the opposition in relation to the part of the public for which ‘greco’ has no meaning and has a normal degree of distinctiveness.
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.
Conceptually, neither of the signs has a meaning for the 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.
Visually, the signs coincide in the letters ‘GRE-O’. However, they differ in the letter ‘C’ in the earlier mark the counterpart of which is ‘K’ in the contested sign and the additional letters ‘YO’ at the start of the contested sign that have no counterpart in the earlier mark. They differ also with respect to graphic design of the marks, as described above and the colours used. The general impression of the signs is quite distinct. Therefore, the signs are visually similar to a low degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the syllables in the sound of the letters) ‛GRECO/GREKO’ present identically in both signs. The pronunciation differs in the sound of the letters ‛YO’ at the beginning of the contested mark, which has no counterpart in the earlier sign. Therefore, the signs are aurally similar to an average degree at most.
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. The goods themselves are fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (15/04/2010, T-488/07, Egléfruit, EU:T:2010:145). The level of attention of the consumer for such goods varies between average and low.
The signs are visually similar to low degree and aurally similar at most to an average degree, the conceptual aspect not impacting the similarity of signs. The earlier sign has a normal degree of distinctive character.
Overall, the visual impact of the signs is quite distinct due to the different colours used and the contrasting graphic styles as described above. In addition the beginnings of the signs, where the consumers’ attention is focused, are also different. The coinciding verbal elements are not so evident in the contested sign as they are integrated in a longer distinctive verbal element. Given the above, and in particular the importance of the visual impact of the signs in this case, there is no likelihood of confusion on the part of the public for which the element ‘greco’ is distinctive. This can be said even for those with a low level of attention because the visual differences are quite blatant and outweigh any similarity.
This absence of a likelihood of confusion equally applies to the part of the public for which the element ‘greco’ is non-distinctive. This is because, as a result of the non-distinctive character of that element, that part of the public will perceive the signs as being even less similar.
Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.
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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Tobias KLEE | Lynn BURTCHAELL | Begoña URIARTE VALIENTE |
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.