OPPOSITION No B 2 652 793

Orkla Foods Sverige AB, S-241 81 Eslöv, Sweden (opponent), represented by Zacco Sweden AB, Valhallavägen 117, 114 85 Stockholm, Sweden (professional representative)

a g a i n s t

Βασιλειοσ Ηλιοπουλοσ, Φαιδριαδων 14, 11364 Αθηνα, Greece (applicant), represented by Olga Ntova, Akadimias 61, 10679 Athens, Greece (professional representative).

On 25/01/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 652 793 is upheld for all the contested goods, namely 

Class 29: Milk; curd; drinks made from dairy products; condensed milk; skimmed milk; milk products; dairy puddings; cream [dairy products]; chilled dairy desserts; dairy products and dairy substitutes; milk beverages, milk predominating; flavoured milk.

Class 30: Pasta; dried pasta; deep frozen pasta; pasta containing stuffings; prepared pasta; wholemeal pasta; fresh pasta; ready-made dishes containing pasta; pasta for soups

2.        European Union trade mark application No 14 842 091 is rejected for all the contested goods. It may proceed for the remaining goods.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 842 091, namely against all the goods in Classes 29 and 30. The opposition is based on European Union trade mark registration No 13 336 656. 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.

1. The goods

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

Class 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats.

Class 30: Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice.

Class 31: Live animals; fresh fruits and vegetables; seeds; natural plants and flowers; foodstuffs for animals; malt; agricultural, horticultural and forestry products as well as grains not included in other classes.

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

The contested goods are the following:

Class 29: Milk; curd; drinks made from dairy products; condensed milk; skimmed milk; milk products; dairy puddings; cream [dairy products]; chilled dairy desserts; dairy products and dairy substitutes; milk beverages, milk predominating; flavoured milk.

Class 30: Pasta; dried pasta; deep frozen pasta; pasta containing stuffings; prepared pasta; wholemeal pasta; fresh pasta; ready-made dishes containing pasta; pasta for soups.

Contested goods in Class 29

The contested milk and milk products are identically contained in both lists of goods.

 

The contested condensed milk; skimmed milk; flavoured milk are included in the broad category of the opponent’s milk. Therefore, they are identical.

The contested curd; drinks made from dairy products; dairy puddings; cream [dairy products]; chilled dairy desserts; dairy products; milk beverages, milk predominating are included in the broad category of the opponent’s milk products. Therefore, they are identical.

The contested dairy substitutes are included in the broad category of, or overlap with, the opponent’s preserved vegetables. Therefore, they are identical.

Contested goods in Class 30

The contested pasta; dried pasta; deep frozen pasta; pasta containing stuffings; prepared pasta; wholemeal pasta; fresh pasta; ready-made dishes containing pasta; pasta for soups are included in the broad category of, or overlap with, the opponent’s preparations made from cereals. Therefore, they are identical.

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 are directed at the public at large. The degree of attention is deemed average.

3. The signs

ÖNOS
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 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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-Greek-speaking part of the relevant public.

The earlier mark is a word mark made up of the single word ‘ÖNOS’.

The contested sign is a figurative mark consisting of the word ‘ONOS’, written in slightly stylised black uppercase, above which is displayed another word element in small black Greek script.

Neither mark has elements that could be considered clearly more distinctive than other elements.

The earlier mark has no element that could be considered more eye-catching (dominant) than other elements.

The element ‘ONOS’ in the contested sign is the dominant element as it is more eye-catching.

Visually, the signs coincide in the letters ‘ONOS’ albeit that these are represented in a specific way in the contested sign. The signs differ in the diacritic placed on the letter initial letter ‘O’ of the earlier mark and in the additional word element as well as the stylisation of the contested sign. Regarding this sign, it should nevertheless be noted that the additional word element occupies a secondary position and that the stylisation applied to this sign is not particularly elaborate or sophisticated and in any event not such as to lead the consumer’s attention away from the elements it is applied to. Therefore, the signs are highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides at least in the sound of the letters ‘*-NOS’. In addition, where the diacritic placed on the initial letter ‘O’ in the earlier mark will not modify the pronunciation of this letter (for instance in French, Italian, Spanish or Portuguese), the pronunciation of the signs coincides further in the sound of this letter. Taking into account that the public under analysis will not be able to read or understand the secondary word element of the contested sign in Greek script, it will not pronounce it either. Therefore, for part of the relevant public, the signs are aurally identical.

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.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, §16).

According to the same line of case-law, 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). In addition, the global assessment of the risk of confusion entails certain interdependence between the factors taken into account and, in particular, between the similarity of the trademarks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (Canon, § 17). Moreover, for the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind.

In the present case, the goods at issue are identical and the signs are visually highly similar and, for part of the non-Greek-speaking public, aurally identical in the letters and corresponding sounds of ÖNOS/ONOS. The remaining word element of the contested sign is secondary and the stylisation of the sign hardly has any impact on the public. Therefore, the similarities between the signs clearly outweigh the differences.

Considering all the above, there is a likelihood of confusion on the part of the non-Greek-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 336 656. It follows that the contested trade mark must be rejected for all the contested goods.

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

Begoña URIARTE VALIENTE

Martina GALLE

Benoit VLEMINCQ

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.