DELLOS BEST FOOD SUPPLY | Decision 2642455

OPPOSITION No B 2 642 455

Dellos International Co., Ltd., #501, 378, Olympic-ro, Songpa-gu, Seoul, Republic of Korea (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB – Patentanwälte Rechtsanwälte, Postfach 10 71 27, 28071 Bremen, Germany (professional representative)

a g a i n s t

Spring Star Foodstuff LLC, Nouf Tower Office No. 501, Plot No. 129-126, Port Saeed, Deira, Dubai, United Arab Emirates (applicant), represented by Isern Patentes y Marcas S.L., Avenida Diagonal 463 bis, 2° piso, 08036 Barcelona, Spain (professional representative).

On 26/01/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 642 455 is partially upheld, namely for the following contested goods:

Class 30: Coffee, tea, cocoa and artificial coffee; rice; preparations made from cereals; confectionery; ices; sauces (condiments); spices.

Class 31: Agricultural, horticultural products not included in other classes; live animals; fresh fruits and vegetables; malt.

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

2.        European Union trade mark application No 14 653 828 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 653 828. The opposition is based on European Union trade mark registration No 14 131 502. 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: Eggplants (preserved); Potatoes (preserved); Sweet potatoes (preserved); Flowering ferns (preserved); Brackens (preserved); Red pepper (preserved); Pick purses (preserved); Mung bean sprout (preserved); Carrots (preserved); Wax gourds (preserved); Garlics (preserved); Butterburs (preserved); Radishes (preserved); Gourds (preserved); Celery cabbage (preserved); Bell peppers (preserved); Leeks (preserved); Prickly ash (preserved); Lettuce (preserved); Truffles (preserved); pine mushroom (preserved); Spinach (preserved); Artichokes (preserved); Cabbages (preserved); Onions (preserved); Cucumbers (preserved); Burdocks (preserved); Ginsengs (preserved); Perilla (preserved); Bamboo shoots (preserved); Bean sprouts (preserved); Canned Tomatoes; Canned tomato paste; Canned fruits; Canned vegetables; Welsh onions (preserved); Parsley (preserved); Shiitake mushrooms (preserved); Unripe beans (preserved); Pimentos (preserved); Squashes (plants, preserved); Thick tofu; Tofu; Soya bean milk; Persimmons (preserved); Jujubes (preserved); Strawberries (preserved); Lemons (preserved); Melons (preserved); Chinese quince (preserved); Mandarin oranges (preserved); Bananas (preserved); Bartlett pears (preserved); Chestnuts (preserved); Pears (preserved); Peaches (preserved); Loquat (preserved); Apples (preserved); Apricots (preserved); Watermelons (preserved); Avocados (preserved); Asian pears (preserved); Cherries (preserved); Orange (preserved); Gingko nuts (preserved); Plums (preserved); Grapefruits (preserved); Pine nuts (preserved); oriental melons (preserved); Kiwifruits (preserved); Pineapples (preserved); Papayas (preserved); Feijoa (preserved); Grapes (preserved); Walnuts (preserved); Dried eggs; Eggs; Frozen eggs; Quail eggs; Powered eggs; Duck eggs; Fermented milk; Powdered milk (except for infants); Sour milk; Goat milk; Sheep milk; evaporated milk; Yoghurt; Milk; Lactic acid bacteria drinks; Lactic acid drinks; Whey; Cheese; Kefir (milk beverage); Condensed milk; Koumiss (kumiss) (milk beverage); Cream; Whipped cream; Butter; Buttercream; Snakeheads (not live); Stingray (not live); Flounder (not live); Crayfish (not live); Hairtail (not live); Crabs (not live); Mackerels (not live); Whales (not live); Flatfish (not live); Oysters (not live); Saury (not live); Small octopuses (not live); halibut (not live); Blue marlin (not live); Sea basses (not live); Cods (not live); Salt-fermented cod roe (not live); Clams (not live); Sea breams (not live); Dried herring roe; Anchovy (not live); Alaska pollack (not live); Octopus (not live); Loach (not live); Short-necked clams (not live); Yellow tails (not live); Large-eyed herring (not live); Eels (not live); Pomfret (not live); Sand smelt (not live); Swellfish (not live); Rockfish (not live); Crucian carps (not live); Congers (not live); Spanish mackerel (not live); Sharks (not live); Shrimps (not live); Sea urchins (not live); Salted and fermented sea urchin roe (not live); Salted salmon roe (not live); Turban shell (not live); Gray mullet (not live); Edible frogs (not live); Dybowskii’s sand eel (not live); Salmon (not live); Squid (not live); Sea squirt (not live); Sweet fish (not live); Carp (not live); Soft-shelled turtles (not live); Saurel (not live); Abalones (not live); Gizzard shad (not live); Sardines (not live); Shellfish (not live); Yellow corvenia (not live); Slender shad (not live); Filefish (not live); Tuna fish (not live); Spearfish (not live); Herrings (not live); Caviar; Sea cucumbers (not live); Skate (not live); Mussels (not live); Swordfish (not live); Sweet laver; Sewing thread Sea string; Sea tangle (processed); Gulf weed (processed); Brown seaweed (processed); Sea staghorn (processed); Chlorella (processed); Sea-weed fusiforme (processed); Green laver (processed); processes algar for human consumption; Laver (processed).

Class 32: Extracts of hops for making beer; Rice nectar (beverages); Powders used in the preparation of fruit-based beverages; Fruit extracts; Peanut milk (soft drink); Lemonades; Syrups for lemonade; Mandarin orange juices; Powders for effervescing beverages; Pastilles for effervescing beverages; Fruit nectars (non-alcoholic); Aperitifs (non-alcoholic); Cocktails (non-alcoholic); Apple juices (beverages); Soda pop; Seltzer water; Soda water; Orgeat; Milk of almonds (beverage); Isotonic beverages; Orange juice beverages; Whey beverages; Sarsaparilla (nonalcoholic beverage); Sherbets (beverages); Ginseng powders; Ginseng extracts; Ginseng juices (beverages); Ginger ale; Coffee syrup; Cola syrup; Aerated water; Preparations for making aerated water; Pineapple juice beverages; Grape must (unfermented); Grape juice beverages; Tomato juice (beverage); Mango juices; Pear juices; Banana juice; Strawberry juices; Peach juices; Mixed juices (beverages); Cherry juices; Guava juice; Aloe juices; Mineral water; Bottled water; Mineral water (beverages); Beer; Beer wort; Stout; Synthetic beer; Dark beer.

The contested goods are the following:

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: Grains and agricultural, horticultural and forestry products not included in other classes; live animals; fresh fruits and vegetables; seeds; natural plants and flowers; foodstuffs for animals; malt.

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

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be 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 30

The contested ices are a smooth, sweet and cold food prepared from a mixture of milk products and/or flavourings and often eaten as a snack or dessert. The opponent’s yoghurt in Class 29 is a fermented milk product produced by bacterial fermentation of milk that can be sweetened and flavoured. These goods have, to a certain extent, the same nature (their basic ingredient being milk or cream) and purpose (they can be served as dessert), and they have the same manufacturers (producers of milk products), sales points and end users. Moreover, they are in competition. Therefore, these goods are similar to a high degree.

The contested sauces (condiments) are similar to a high degree to the opponent’s canned tomatoes in Class 29, as they have the same purpose. They can have the same producers, end users and distribution channels. Furthermore, they are in competition.

The contested spices refer to any of various aromatic vegetable products (e.g. pepper or nutmeg) used to season or flavour foods. These goods are similar to the opponent’s red pepper (preserved) in Class 29, since they have the same purpose, that is, to season food. They can have the same producers, end users and distribution channels.

The contested coffee is a brewed drink with a distinct aroma and flavour, prepared from roasted coffee beans. The contested tea, cocoa are beverages to be drunk hot or cold. The contested artificial coffee is a product, usually without caffeine, that is used as a substitute for coffee. These goods are similar to a low degree to powders used in the preparation of fruit-based beverages in Class 32, which are substances of various natures to be mixed with other ingredients to obtain fruit-flavoured soft drinks. These goods can have the same end users, distribution channels and method of use.

The contested rice is similar to a low degree to the opponent’s rice nectar (beverages) in Class 32, as they can have the same producers, end users and distribution channels.

The contested preparations made from cereals are similar to a low degree to the opponent’s milk in Class 29, as they can have the same producers, end users and distribution channels.

The contested confectionery is similar to a low degree to the opponent’s mandarin oranges (preserved) in Class 29, as they can have the same producers, end users and distribution channels.

The contested tapioca and sago; flour; bread are foodstuffs produced from grains. The contested pastry is a broad category of bakers’ confectionery that includes many kinds of baked products. The contested sugar, honey, treacle are goods used as main or additional sweetening ingredients in the preparation of various products. The contested yeast, baking-powder are leavening agents that are used to increase the volume of baked goods. The contested salt; mustard; vinegar are condiments, some of which can be use both for seasoning and preserving purposes. The contested ice is frozen water. These goods in Class 30 and the opponent’s goods in Classes 29 and 32 have different natures, purposes and methods of use. They do not have the same suppliers or producers. They are not complementary to or in competition with each other. Furthermore, even though they may be sold through the same distribution channels, they cannot be found on the same shelves or in the same sections or departments of supermarkets or groceries. Therefore, the contested goods are dissimilar to all the opponent’s goods.

Contested goods in Class 31

The contested agricultural, horticultural products not included in other classes; fresh fruits and vegetables and the opponent’s canned fruit, canned vegetables in Class 29 are similar to a low degree. These goods are distributed through the same channels, target the same relevant public and are in competition with each other.

The contested live animals are basically animals bred to be sold alive. They are similar to a low degree to the opponent’s rockfish (not live) in Class 29. These goods can be produced by the same undertakings and put on the market throughout the same distribution channels.

The contested malt is a grain (e.g. barley) softened by steeping in water, allowed to germinate, and used in brewing and distilling. It is the main ingredient of the opponent’s extracts of hops for making beer in Class 32, which is a substance obtained from malt and used in the production of beer. These goods have the same nature and producers. Therefore, they are similar to a low degree.

The contested grains not included in other classes; seeds indicate any propagative part of a plant. The contested forestry products not included in other classes relate to the cultivation of forests. The contested natural plants and flowers include vegetable products that are retailed alive, usually for gardening or breeding. All these goods are products of the land not having been subjected to any form of preparation for consumption. The contested foodstuffs for animals are goods providing nourishment for animals and may include fodder. These goods in Class 31 and the opponent’s goods in Classes 29 and 32 have different natures, purposes and methods of use. They do not have the same suppliers or producers. They are not complementary to or in competition with each other. Furthermore, even though some of them may be sold through the same distribution channels, they cannot be found on the same shelves or in the same sections or departments of supermarkets or groceries. Therefore, the contested goods are dissimilar to all of the opponent’s goods.

Contested goods in Class 32

Beers; mineral and aerated waters are identically contained in both lists of goods.

The contested other non-alcoholic beverages include, as a broader category, the opponent’s aperitifs (non-alcoholic). 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 fruit beverages and fruit juices include, as a broader category, the opponent’s orange juice beverages. 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 syrups for making beverages include, as a broader category, the opponent’s cola syrup. 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 other preparations for making beverages include, as a broader category, the opponent’s powders used in the preparation of fruit-based beverages. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

  1. 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. The degree of attention is deemed to vary from low to average, depending on the nature and price of the goods and on the frequency with which they are purchased.

  1. The signs

 

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http://prodfnaefi:8071/FileNetImageFacade/viewimage?imageId=122166704&key=036a11930a840803398a1cf19562ccc8

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 a figurative mark including the word ‘Dellos’, written in slightly stylised white title case letters. This verbal element has no meaning for the relevant public and therefore has an average degree of distinctiveness. As regards the graphic depiction of the sign, the letters forming the word ‘Dellos’ have an inner red line that follows their shape. The verbal element is depicted within an oval in shades of red. Due to its simplicity and merely decorative nature, this element is less distinctive than the verbal element.

The contested sign is a figurative mark that includes the same letters, ‘Dellos’, depicted with the same stylisation, within an oval that is grey but otherwise identical to that in the earlier mark. Therefore, the Opposition Division refers to the considerations on the distinctive character of the elements described above. The contested sign contains the additional verbal element ‘Best Food Supply’, depicted under the word ‘Dellos’ in slightly stylised, significantly smaller and thinner, white title case letters. Due to its small size and position – and its depiction in grey and white, which makes it difficult to decipher – this component will not be noticed at first sight and, therefore, is very likely to be disregarded by the relevant public. Consequently, this expression is considered a negligible element and will not be taken into consideration for the purposes of the comparison of the signs.

Neither of the marks has any element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the verbal element ‘Dellos’ and in their stylisation and graphic elements, the latter being of limited distinctiveness. They differ in the colours used. The earlier mark is depicted in white and red, while the contested sign is depicted in white and grey. Therefore, the signs are visually highly similar.

Aurally, the signs are identical.

Conceptually, the signs’ verbal elements have no meaning for the public in the relevant territory. The oval shapes are merely decorative and will not be associated with any concept capable of influencing the perception of the signs. 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.

  1. 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 despite the presence of a weak element in the mark as stated above in section c) of this decision.

  1. Global assessment, other arguments and conclusion

The earlier mark has an average degree of distinctiveness; the goods are partly identical, partly similar to different degrees and partly dissimilar. The degree of attention paid by consumers varies from low to average.

The signs are visually similar to a high degree on account of the coinciding element ‘Dellos’ and their very similar graphic depictions. They are aurally identical.

The contested sign includes the additional words ‘Best Food Supply’. However, as explained above in section c) of this decision, this element is negligible and will be disregarded by the relevant public. Consequently, in the opinion of the Opposition Division, the differences between the marks are not sufficient to outweigh the similarities arising from the coinciding element ‘Dellos’, which is distinctive for the relevant consumers, and the very similar graphic elements of the signs, which, although less distinctive than the word elements, will not be completely ignored by consumers.

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. In the present case, given the minimal differences between the signs – arising essentially from the different colours of the backgrounds – it is highly likely that consumers would either confuse them or think that they were variations of the same mark.

Considering all the above and following a global assessment of all the relevant factors, the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public. Therefore, the opposition is partially well founded on the basis of the opponent’s European Union trade mark registration No 14 131 502.

It follows that the contested trade mark must be rejected for the contested goods found to be identical or similar to those of the earlier trade mark.

This conclusion also stands for the contested goods found to be similar to a low degree. 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 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, it is considered that the similarity between the signs is sufficient to lead to a likelihood of confusion even in relation to the goods that are similar only to a low degree.

The rest of the contested goods are dissimilar. As similarity of goods and/or services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

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 shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

 

Oana-Alina STURZA

Orsola LAMBERTI

Plamen IVANON

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.

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