ZORBAS | Decision 2685884 - ALIMPEX FOOD a.s. v. MANUZZI IMPORT EXPORT SRL
Date Published: Sep 28, 2017
OPPOSITION No B 2 685 884
Alimpex Food a.s., Českobrodská 1174, 198 00 Prague 9, Czech Republic (opponent), represented by Fischer & Partner IP S.R.O., Na Hrobci 5, 128 00 Prague 2, Czech Republic (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 03/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 685 884 is upheld for all the contested goods, namely
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; yoghurt-based desserts; cheese-based sauces and condiments.
2. European Union trade mark application No 14 953 509 is rejected for all the contested goods. It may proceed for the remaining goods.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 14 953 509, namely against some of the goods in Class 29. The opposition is based on, inter alia, Slovak trade mark registration No 242 668. 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 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 Slovak trade mark registration No 242 668.
- The goods
The goods on which the opposition is based are the following:
Class 29: Milk and milk products; yoghurt; butter; cheese; spreads containing milk products; milk desserts (milk products); preserved, dried or cooked foods made from milk.
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; yoghurt-based desserts; cheese-based sauces and condiments.
Milk and milk products; yoghurt; butter; spreads containing milk products are identically contained in both lists of goods (including synonyms).
The contested feta cheese, curd cheese is included in the broad category of the opponent’s cheese. Therefore, they are identical.
The contested desserts containing milk products; yoghurt-based desserts are included in the broad category of, or overlap with, the opponent’s milk desserts (milk products). Therefore, they are identical.
The contested cheese products include, as a broader category, or overlap with, the opponent’s 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 cream (dairy products); drinks made from dairy products; yoghurt creams; cheese-based sauces and condiments are included in the broad category of, or overlap with, the opponent’s milk products. Therefore, they are identical.
- 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 are directed at the public at large. The degree of attention will be average or lower than average, since the relevant goods are foodstuffs for everyday consumption that are frequently purchased and relatively cheap.
- The signs
ZORBA |
|
Earlier trade mark | Contested sign |
The relevant territory is Slovakia.
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 the word mark ‘ZORBA’. The contested sign is a figurative mark consisting of a device featuring the verbal element ‘ZORBAS’ written in upper case, slightly stylised, letters. The figurative element may be seen as a reference to the Ancient Greek culture as it depicts, inter alia, a prototype of a Greek man holding an amphora and an acropolis on the background.
The verbal elements ‘ZORBA’ and ‘ZORBAS’ of the two signs will be understood at least by a part of the relevant Slovak public as a reference to the main character Alexis Zorba/s of the popular novel and eponymous film ‘Zorba the Greek’ (‘Grék Zorba’ in Slovak) and, in a more global sense, they will be perceived as a Greek male name. As the terms are not descriptive, allusive or otherwise weak for the relevant goods, they are considered distinctive in the relevant signs. Furthermore, they will be distinctive also for the rest of the public that does not see them as meaningful.
In regard to the figurative element in the contested sign, as mentioned above, it contains some typical attributes of the Greek culture and to some extent they may be seen as suggestive to the origin or the nature of the relevant products. None of the marks has more dominant (or eye-catching) elements.
Visually, the signs coincide in the letters ‘ZORBA’, representing the entire earlier mark and most of the contested sign’s verbal element. They only differ in the last letter ‘S’ of that verbal element, as well as in its figurative device. With respect to the figurative device, in addition to being considered suggestive to the goods’ origin or nature, it will have less impact on consumes’ perception as, in principle, the verbal component of a sign has a stronger impact 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, taking into these findings, the signs are considered visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛ZORBA’, present identically in both signs. The pronunciation will only differ in the sound of the differentiating last letter ’S’ in the contested sign. Therefore, the signs are considered aurally highly similar.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will be perceived by a part of the public as a reference to the Greek fictional character ‘ZORBA/S’ or to a Greek male name in general and the additional figurative elements in the contested sign, as referred above, will evoke typical concepts of the Greek culture that may only serve to reinforce the more distinctive concept of the verbal element ‘ZORBAS’; to that extent, the signs are found conceptually highly similar.
For the part of the public that does not perceive the verbal elements as meaningful, one of the signs will bear no meaning at all and to that extent, the marks are conceptually not similar.
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
The goods in question are identical and the degree of attention is average or below the average, since the goods concerned are cheap and frequently purchased.
The signs are visually similar to an average degree and aurally highly similar to the extent that the earlier mark is entirely incorporated the contested sign. As to the differentiating last letter ‘S’, 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). Therefore, a difference in one last letter, in a non-prominent position, may be easily overseen or misheard by the relevant consumers. Furthermore, as concluded above, for a part of the public the signs are also conceptually similar to a high degree as they both refer to the fictional male character originating from Greece, ‘Zorba’ or ‘Zorbas’ or to a Greek name.
In addition, 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). In the present case, the goods are identical and this will counterbalance the small differences between the signs, as commented above.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s Slovak trade mark registration No 242 668. It follows that the contested trade mark must be rejected for all the contested goods.
As the earlier right 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).
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
Liliya YORDANOVA | Patricia LOPEZ FERNANDEZ DE CORRES | Volker MENSING |
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.