OPPOSITION No B 2 713 108

Caffècel-Indústria Torrefactora de Cafés, S.A., Monte da Póvoa, 4580-017 Paredes, Portugal (opponent), represented by Simões, Garcia, Corte-Real & Associados – Consultores, Lda., Rua Castilho, 167, 2º andar, 1070-050 Lisboa, Portugal (professional representative)

a g a i n s t

Organika +, Špruha 36, 1236 Trzin, Slovenia (applicant).

On 22/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 713 108 is upheld for all the contested goods.

2.        European Union trade mark application No 15 170 814 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 15 170 814. The opposition is based on international trade mark registration No 576 400 designating Benelux, Spain, France and Portugal. 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 an international registration designating various territories. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration No 576 400 designating France.

1. The goods

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

Class 30:        Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flours and cereal preparations, bread, pastries and confectionery, ices; honey, syrups and treacles; yeast, baking powder; salt, mustard; vinegar, sauces (except dressing for salad); spices; cooling ice.

The contested goods are the following:

Class 30:        Ice cream substitute; Ice cream; Non-dairy ice cream.

Contested goods in Class 30

The opponent’s ices are to be understood as ‘edible ices’ (glaces comestibles in the French version of the registration certificate). Edible ices are products such as water ice, ice cream, milk ice, dairy ice cream, fruit ice, sorbet and similar foods such as iced smoothies and other products of which edible ice is a component and that are consumed in their frozen state.

Consequently, the contested ice cream substitute, ice cream and non-dairy ice cream are included in the broad category of the opponent’s ices. 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 average.

3. The signs

INDY	INDY&(AND)PIPPA
Earlier trade mark	Contested sign

The relevant territory is France.

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 word mark composed of one verbal element, ‘INDY’. This element has no meaning for the relevant public and is, therefore, distinctive.

The contested mark is a word mark, ‘INDY&(AND)PIPPA’. The verbal elements ‘INDY’ and ‘PIPPA’ have no meaning for the relevant public. The ampersand symbol is known and used in France, especially in company names, as the conjunction ‘and’. ‘And’ is a basic English word, understood throughout the whole European Union. Therefore, the logogram together with its explanation in English, ‘&(AND)’, will be understood by the French public as the conjunction ‘and’. As none of the verbal elements of the contested sign it is descriptive, allusive or otherwise weak for the relevant goods, they are distinctive.

Since both signs are word marks, they have no elements that could be considered more dominant than other elements.

It must be emphasised that 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.

Visually, the signs coincide in the verbal element ‘INDY’, that is to say, the earlier trade mark, ‘INDY’, is fully included in the contested sign, moreover as its first element. The signs differ in the additional verbal elements of the contested sign, namely ‘&(AND)PIPPA’, which have no counterparts in the earlier trade mark.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in their first syllables, ‛IN-DY’, present identically in both signs. The pronunciation differs in the sound of the letters ‘&(AND)PIPPA’ of the contested sign, which have no counterparts in the earlier trade mark.

Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the explanations given above concerning the semantic content of the signs. Although the French public will understand the conjunction ‘and’ in the contested sign, apart from that, it does not convey any specific concept that could be remembered and recalled. Therefore, neither of the signs as a whole 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

The contested goods are identical to the opponent’s goods. The signs are visually and aurally similar to an average degree and the conceptual aspect does not influence the assessment of the similarity of the signs. The degree of attention of the relevant public is average. The distinctive character of the earlier mark is normal.

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). This principle is clearly applicable to the present case.

Moreover, 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.

The earlier trade mark, ‘INDY’, is fully included in the contested sign, moreover as its first element, followed by the conjunction ‘&(AND)’ and another verbal element. It is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion, including a likelihood of association, on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 576 400 designating France. It follows that the contested trade mark must be rejected for all the contested goods.

As earlier international trade mark registration No 576 400 designating France 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

Catherine MEDINA

Anna ZIÓŁKOWSKA

Adriana VAN ROODEN

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.