OPPOSITION No B 2 661 919

Bodegas Benjamín De Rothschild & Vega Sicilia, S.A., Carretera Vitoria-Logroño (A-124), Km. 61, 01309 Leza, Spain (opponent), represented by Consultores Urizar & Cia., Gordóniz, 22 – 5º, 48012 Bilbao (Vizcaya), Spain (professional representative)

a g a i n s t

Faan Zuidhorn B.V., Oppers 58, 8471 ZM Wolvega, the Netherlands (applicant), represented by Menno Jansen, Van Eedenstraat 7, 2012 EL Haarlem, the Netherlands (professional representative).

On 23/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 661 919 is partially upheld, namely for the following contested goods and services:

Class 29: Meat, fish, poultry and game; Meat extracts; Preserved, dried and cooked fruits and vegetables; Jellies, jams; Eggs, milk and milk products; Edible oils and fats; Peanut butter; Hazelnut puree; Pulses; Jams; Sandwich fillings, namely pastes; Seaweed extracts for human consumption; Coconut oil; Coconut milk; Tofu, Tempeh, Seitan and Tofu; Oriental snacks, not included in other classes; Processed oriental nuts; Ready to eat snack foods; Dried and processed nuts; Raisins; Potato crisps and potato chips; Potato crisps, including produced using ecological and/or organic agriculture; Potato-based snack foods; Dried subtropical fruits; Prepared soups; Oriental/Asian ingredients for meals, not included in other classes; Vegetarian foodstuffs and prepared dishes (included in this class) incorporating to a certain degree plant-based preparations (including substitutes for meat, fish, poultry and game) and tofu, tempeh, seitan, bean curd, preserved, cooked and dried fruits and vegetables.

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; Flour and preparations made from cereals, bread, pastry and confectionery, edible ices; Honey, treacle; Yeast, baking powder; Salt, mustard; Vinegar, sauces, salad dressings; Spices; Ice; Bread, confectionery, cookies, cakes, crackers; Pasta, including spaghetti, macaroni; Grain-based syrups; Corn syrup, beetroot syrup; Soya sauce; ketjap; Salad cream; Spices (oriental/Asian); Sauces for seasoning; Rice tapioca; Pasta, Bakmi and Chinese noodles; Ginger; sambals; Soya sauce, including soya sauces such as tamari and shoyu soya sauces; ketjap; Oriental snacks, not included in other classes; Corn-based snack foods; Rice-based snack food; Snack products made from rice; Rice cakes and Rice crackers; Cereal-based snack food; Chilli, peanut, satay and pepper sauces, flour and preparations made from cereals; Wok sauces; Asian food, not included in other classes; Natural sweeteners; Agave syrup, being a natural sweetener; prawn cracker; Oriental/Asian ingredients for meals, not included in other classes.

Class 35: Advertising; Business management; Business administration; Office functions; Business and commercial consultancy, franchise services, advertising, office functions in the field of franchise organisations; Business mediation, including (but not limited to) in relation to meat, fish, poultry and game, meat extracts, preserved, dried and cooked fruits and vegetables, jellies, jams, eggs, milk and milk products, edible oils and fats, preserved foodstuffs; Business mediation, including in relation to soya products, peanut butter, hazelnut puree, pulses, jams, seaweed extracts for human consumption, coconut oil, coconut milk; Business mediation, including in relation to tofu, tempeh, seitan and bean curd, processed oriental nuts, dried and processed nuts, raisins, potato crisps and chips, potato crisps, including produced using ecological and/or organic agriculture; Business mediation, including in relation to snacks based on potatoes, dried subtropical fruits; Business mediation, including in relation to coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionery, ices, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, sauces (condiments), salad dressings; Business mediation, including in relation to spices, ice, soya products, bread, confectionery, cookies, cakes, crackers, pasta, including spaghetti, macaroni, grain-based syrups, corn syrup, beetroot syrup; Business mediation, including in relation to soya sauce, salad dressings, spices (oriental/Asian), sauces (condiments), rice, tapioca, pasta, bakmi and Chinese noodles, ginger, sambals, soya sauce, including soya sauces such as tamari and shoyu soya sauces; Business mediation, including in relation to corn-based snacks, rice-based snack food, snack products made of rice, rice cakes and rice crackers, grain-based snack foods; Business mediation, including in relation to chilli, peanut, satay and pepper sauces, flour and preparations made from cereals, wok sauces, noodles, natural sweeteners, agave syrup, being a natural sweetener, prawn crackers, vegetarian foodstuffs and prepared dishes incorporating to a certain degree plant-based preparations (including substitutes for meat, fish, poultry and game) and tofu, tempeh, seitan, bean curd, preserved, cooked and dried fruits and vegetables; Business mediation in the purchase and sale, export and import, including of (but not limited to) meat, fish, poultry and game, meat extracts, preserved, dried and cooked fruits and vegetables, jellies, jams, eggs, milk and milk products, edible oils and fats, preserved foodstuffs, soya products, peanut butter, hazelnut puree, pulses, jams, seaweed extracts for human consumption, coconut oil, coconut milk; Business mediation in the purchase and sale, export and import, including of tofu, tempeh, seitan and bean curd, processed oriental nuts, dried and processed nuts, raisins, potato crisps and chips, potato crisps, including produced using ecological and/or organic agriculture, snacks based on potatoes, dried subtropical fruits, prepared soups; Business mediation in the purchase and sale, import and export, including of coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionery, ices, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, sauces (condiments), salad dressings, spices, ice; Business mediation in the purchase and sale, export and import, including of preserved foodstuffs, soya products, bread, confectionery, cookies, cakes, crackers, pasta, including spaghetti, macaroni, grain-based syrups, corn syrup, beetroot syrup, soya sauce, salad dressings, spices (oriental/Asian), sauces (condiments); Business mediation in the purchase and sale, export and import, including of rice, tapioca, pasta, bakmi and Chinese noodles, ginger, sambals, soya sauce, including soya sauces such as tamari and shoyu soya sauces, corn-based snacks, rice-based snack food, snack products made of rice, rice cakes and rice crackers, grain-based snack foods, chilli, peanut, satay and pepper sauces, flour and preparations made from cereals, wok sauces, noodles, natural sweeteners, agave syrup, being a natural sweetener, prawn crackers; Business mediation in the purchase and sale, export and import, including of vegetarian foodstuffs and prepared dishes incorporating to a certain degree plant-based preparations (including substitutes for meat, fish, poultry and game) and tofu, tempeh, seitan, bean curd, preserved, cooked and dried fruits and vegetables; Business mediation in the purchase and sale, including of oriental/Asian ingredients for meals; Including all the aforesaid services in the context of wholesaling and retailing; Marketing services; Organisation of trade fairs, exhibitions and other events for commercial and advertising purposes; Arranging and conducting culinary events for commercial and promotional purposes; Advice, consultancy and information regarding the aforesaid services, including provided via electronic networks such as the Internet.

2.        European Union trade mark application No 14 510 853 is rejected for all the above goods and services. It may proceed for the remaining services, namely:

Class 35: Business mediation, including in relation to sandwich fillings, namely pastes, oriental snacks, ready-made snacks, prepared soups, oriental/Asian ingredients for meals, preserved foodstuffs, sandwich fillings, namely pastes, oriental snacks, Business mediation, including in relation to oriental/Asian ingredients for meals; Business mediation in the purchase and sale, including of (but not limited to) sandwich fillings, namely pastes, business mediation in the purchase and sale including of oriental snacks, ready-made snacks, oriental/Asian ingredients for meals; sandwich fillings, namely pastes, oriental snacks; Business mediation in the purchase and sale, including of oriental/Asian ingredients for meals; products for packaging, including of (but not limited to) the aforesaid goods [oriental/Asian ingredients for meals]; Webshops; Business mediation in the printing of packaging materials and of accessories therefor; Advice, consultancy and information regarding the services of webshops and Business mediation in the printing of packaging materials and of accessories therefor, including provided via electronic networks such as the Internet.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 510 853. The opposition is based on, inter alia, Spanish trade mark registration No 3 029 930. The opponent invoked Article 8(1)(a) and (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 Spanish trade mark registration No 3 029 930.

1. The goods and services

The goods and services 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, pastries and confectionery; edible ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice.

Class 31: Agricultural, horticultural and forestry products; raw and unprocessed grains and seeds; fresh fruits and vegetables; natural plants and flowers; live animals; foodstuffs for animals; malt.

Class 32: Beers; mineral and aerated waters and other non-alcoholic beverages

Class 33: Wines; alcoholic beverages (except beers).

Class 35: Advertising; business management; business administration; office functions, all of them related to the alimentary field.

Class 39: Transport; packaging and storage of goods, in relation with wines, beverages and the alimentary field.

Class 43: Services for providing food and drink; temporary accommodation.

The contested goods and services are the following:

Class 29: Meat, fish, poultry and game; Meat extracts; Preserved, dried and cooked fruits and vegetables; Jellies, jams; Eggs, milk and milk products; Edible oils and fats; Peanut butter; Hazelnut puree; Pulses; Jams; Sandwich fillings, namely pastes; Seaweed extracts for human consumption; Coconut oil; Coconut milk; Tofu, Tempeh, Seitan and Tofu; Oriental snacks, not included in other classes; Processed oriental nuts; Ready to eat snack foods; Dried and processed nuts; Raisins; Potato crisps and potato chips; Potato crisps, including produced using ecological and/or organic agriculture; Potato-based snack foods; Dried subtropical fruits; Prepared soups; Oriental/Asian ingredients for meals, not included in other classes; Vegetarian foodstuffs and prepared dishes (included in this class) incorporating to a certain degree plant-based preparations (including substitutes for meat, fish, poultry and game) and tofu, tempeh, seitan, bean curd, preserved, cooked and dried fruits and vegetables.

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; Flour and preparations made from cereals, bread, pastry and confectionery, edible ices; Honey, treacle; Yeast, baking powder; Salt, mustard; Vinegar, sauces, salad dressings; Spices; Ice; Bread, confectionery, cookies, cakes, crackers; Pasta, including spaghetti, macaroni; Grain-based syrups; Corn syrup, beetroot syrup; Soya sauce; ketjap; Salad cream; Spices (oriental/Asian); Sauces for seasoning; Rice tapioca; Pasta, Bakmi and Chinese noodles; Ginger; sambals; Soya sauce, including soya sauces such as tamari and shoyu soya sauces; ketjap; Oriental snacks, not included in other classes; Corn-based snack foods; Rice-based snack food; Snack products made from rice; Rice cakes and Rice crackers; Cereal-based snack food; Chilli, peanut, satay and pepper sauces, flour and preparations made from cereals; Wok sauces; Asian food, not included in other classes; Natural sweeteners; Agave syrup, being a natural sweetener; prawn cracker; Oriental/Asian ingredients for meals, not included in other classes.

Class 35: Advertising; Business management; Business administration; Office functions; Business and commercial consultancy, franchise services, advertising, office functions in the field of franchise organisations; Business mediation, including (but not limited to) in relation to meat, fish, poultry and game, meat extracts, preserved, dried and cooked fruits and vegetables, jellies, jams, eggs, milk and milk products, edible oils and fats, preserved foodstuffs; Business mediation, including in relation to soya products, peanut butter, hazelnut puree, pulses, jams, sandwich fillings, namely pastes, seaweed extracts for human consumption, coconut oil, coconut milk; Business mediation, including in relation to tofu, tempeh, seitan and bean curd, oriental snacks, processed oriental nuts, ready-made snacks, dried and processed nuts, raisins, potato crisps and chips, potato crisps, including produced using ecological and/or organic agriculture; Business mediation, including in relation to snacks based on potatoes, dried subtropical fruits, prepared soups, oriental/Asian ingredients for meals; Business mediation, including in relation to coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionery, ices, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, sauces (condiments), salad dressings; Business mediation, including in relation to spices, ice, preserved foodstuffs, soya products, bread, confectionery, cookies, cakes, crackers, pasta, including spaghetti, macaroni, sandwich fillings, namely pastes, grain-based syrups, corn syrup, beetroot syrup; Business mediation, including in relation to soya sauce, salad dressings, spices (oriental/Asian), sauces (condiments), rice, tapioca, pasta, bakmi and Chinese noodles, ginger, sambals, soya sauce, including soya sauces such as tamari and shoyu soya sauces; Business mediation, including in relation to oriental snacks, corn-based snacks, rice-based snack food, snack products made of rice, rice cakes and rice crackers, grain-based snack foods; Business mediation, including in relation to chilli, peanut, satay and pepper sauces, flour and preparations made from cereals, wok sauces, noodles, natural sweeteners, agave syrup, being a natural sweetener, prawn crackers, vegetarian foodstuffs and prepared dishes incorporating to a certain degree plant-based preparations (including substitutes for meat, fish, poultry and game) and tofu, tempeh, seitan, bean curd, preserved, cooked and dried fruits and vegetables; Business mediation, including in relation to oriental/Asian ingredients for meals; Business mediation in the purchase and sale, export and import, including of (but not limited to) meat, fish, poultry and game, meat extracts, preserved, dried and cooked fruits and vegetables, jellies, jams, eggs, milk and milk products, edible oils and fats, preserved foodstuffs, soya products, peanut butter, hazelnut puree, pulses, jams, sandwich fillings, namely pastes, seaweed extracts for human consumption, coconut oil, coconut milk; Business mediation in the purchase and sale, export and import, including of tofu, tempeh, seitan and bean curd, oriental snacks, processed oriental nuts, ready-made snacks, dried and processed nuts, raisins, potato crisps and chips, potato crisps, including produced using ecological and/or organic agriculture, snacks based on potatoes, dried subtropical fruits, prepared soups, oriental/Asian ingredients for meals; Business mediation in the purchase and sale, import and export, including of coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionery, ices, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, sauces (condiments), salad dressings, spices, ice; Business mediation in the purchase and sale, export and import, including of preserved foodstuffs, soya products, bread, confectionery, cookies, cakes, crackers, pasta, including spaghetti, macaroni, sandwich fillings, namely pastes, grain-based syrups, corn syrup, beetroot syrup, soya sauce, salad dressings, spices (oriental/Asian), sauces (condiments); Business mediation in the purchase and sale, export and import, including of rice, tapioca, pasta, bakmi and Chinese noodles, ginger, sambals, soya sauce, including soya sauces such as tamari and shoyu soya sauces, oriental snacks, corn-based snacks, rice-based snack food, snack products made of rice, rice cakes and rice crackers, grain-based snack foods, chilli, peanut, satay and pepper sauces, flour and preparations made from cereals, wok sauces, noodles, natural sweeteners, agave syrup, being a natural sweetener, prawn crackers; Business mediation in the purchase and sale, export and import, including of vegetarian foodstuffs and prepared dishes incorporating to a certain degree plant-based preparations (including substitutes for meat, fish, poultry and game) and tofu, tempeh, seitan, bean curd, preserved, cooked and dried fruits and vegetables; Business mediation in the purchase and sale, export and import, including of oriental/Asian ingredients for meals, and products for packaging, including of (but not limited to) the aforesaid goods; Including all the aforesaid services in the context of wholesaling and retailing; Webshops; Marketing services; Business mediation in the printing of packaging materials and of accessories therefor; Organisation of trade fairs, exhibitions and other events for commercial and advertising purposes; Arranging and conducting culinary events for commercial and promotional purposes; Advice, consultancy and information regarding the aforesaid services, including provided via electronic networks such as the Internet.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘including’, used in the applicant’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, also used in the applicant’s list of goods and services 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 goods and services.

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.

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.

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Contested goods in Class 29

Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams (twice); eggs, milk and milk products; edible oils and fats are identically contained in both lists of goods.

The contested peanut butter; hazelnut puree are included in the broad categories of the opponent’s jellies, jams, compotes. Therefore, they are identical.

The contested pulses; seaweed extracts for human consumption; tofu (twice), tempeh, seitan; processed oriental nuts; dried and processed nuts; raisins; potato crisps and potato chips; potato crisps, including produced using ecological and/or organic agriculture; potato-based snack foods; dried subtropical fruits; vegetarian foodstuffs and prepared dishes (included in this class) incorporating to a certain degree plant-based preparations (including substitutes for meat, fish, poultry and game) and tofu, tempeh, seitan, bean curd, preserved, cooked and dried fruits and vegetables are included in the broad categories of the opponent’s preserved, frozen, dried and cooked fruits and vegetables. Therefore, they are identical.

The contested coconut oil is included in the broad category of the opponent’s edible oils. Therefore, they are identical.

The contested coconut milk is considered a dairy product substitute and, as such, it is included in the broad category of the opponent’s milk. Therefore, they are identical.

The contested sandwich fillings, namely pastes; oriental snacks, not included in other classes; ready to eat snack foods; prepared soups; oriental/Asian ingredients for meals, not included in other classes can have as a main ingredient, for example, the opponent’s meat. Therefore, these contested goods are similar to the opponent’s meat, as they have the same origin, nature, purpose and method of use.

Contested goods in Class 30

Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals (twice), bread (twice), pastry and confectionery (twice), edible ices; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces; spices; ice are identically contained in both lists of goods (including synonyms).

The contested cookies, cakes, crackers; pasta, including spaghetti, macaroni; pasta, bakmi and Chinese noodles; corn-based snack foods; rice-based snack food; snack products made from rice; rice cakes and rice crackers; cereal-based snack food are included in the broad category of the opponent’s preparations made from cereals. Therefore, they are identical.

The contested salad dressings; grain-based syrups; corn syrup, beetroot syrup; soya sauce; ketjap; salad cream; sauces for seasoning; sambals; soya sauce, including soya sauces such as tamari and shoyu soya sauces; ketjap; chilli, peanut, satay and pepper sauces, wok sauces; natural sweeteners; agave syrup, being a natural sweetener are included in the broad category of the opponent’s sauces (condiments). Therefore, they are identical.

The contested spices (oriental/Asian); ginger are included in the broad category of the opponent’s spices. Therefore, they are identical.

The contested rice tapioca is included in the broad category of the opponent’s tapioca. Therefore, they are identical.

The contested prawn cracker is included in the broad category of the opponent’s pastries. Therefore, they are identical.

The contested oriental snacks, not included in other classes; Asian food, not included in other classes; oriental/Asian ingredients for meals, not included in other classes are identical to the opponent’s flour and preparations made from cereals, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in or overlap with the contested goods.

Contested services in Class 35

The contested advertising; business management; business administration; office functions; marketing services include, as broader categories, the opponent’s advertising; business management; business administration; office functions, all of them related to the alimentary field. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested business and commercial consultancy in the field of franchise organisations overlaps with the opponent’s business management related to the alimentary field. Therefore, they are identical.

The contested franchise services, in the field of franchise organisations can be rendered in the field of business management. In this case, they overlap with the opponent’s business management related to the alimentary field. Therefore, they are identical.

The contested advertising, in the field of franchise organisations overlaps with the opponent’s advertising related to the alimentary field. Therefore, they are identical.

The contested office functions in the field of franchise organisations overlap with the opponent’s office functions related to the alimentary field. Therefore, they are identical.

The contested business mediation consists in the mediation of trade business for third parties and is considered a type of commercial trading and consumer information services.

Given this, the same principles apply as to activities revolving around the actual sale of goods, such as retail services in the same class. Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the following contested business mediation services of specific goods are similar to a low degree to the respective opponent’s goods in Classes 29 and 30, as they are identical: business mediation, including (but not limited to) in relation to meat, fish, poultry and game, meat extracts, preserved, dried and cooked fruits and vegetables, jellies, jams, eggs, milk and milk products, edible oils and fats, preserved foodstuffs (such as the opponent’s fruits); business mediation, including in relation to soya products (included in the opponent’s vegetables), peanut butter, hazelnut puree, pulses, jams, seaweed extracts for human consumption, coconut oil, coconut milk; Business mediation, including in relation to tofu, tempeh, seitan and bean curd (included in the opponent’s vegetables), processed oriental nuts, dried and processed nuts, raisins, potato crisps and chips, potato crisps, including produced using ecological and/or organic agriculture; business mediation, including in relation to snacks based on potatoes, dried subtropical fruits; business mediation, including in relation to coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionery, ices, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, sauces (condiments), salad dressings; business mediation, including in relation to spices, ice, soya products, bread, confectionery, cookies, cakes, crackers, pasta, including spaghetti, macaroni, grain-based syrups, corn syrup, beetroot syrup; business mediation, including in relation to soya sauce, salad dressings, spices (oriental/Asian), sauces (condiments), rice, tapioca, pasta, bakmi and Chinese noodles, ginger, sambals, soya sauce, including soya sauces such as tamari and shoyu soya sauces; business mediation, including in relation to corn-based snacks, rice-based snack food, snack products made of rice, rice cakes and rice crackers, grain-based snack foods; business mediation, including in relation to chilli, peanut, satay and pepper sauces, flour and preparations made from cereals, wok sauces, noodles, natural sweeteners, agave syrup, being a natural sweetener, prawn crackers, vegetarian foodstuffs and prepared dishes incorporating to a certain degree plant-based preparations (including substitutes for meat, fish, poultry and game) and tofu, tempeh, seitan, bean curd, preserved, cooked and dried fruits and vegetables; business mediation in the purchase and sale, including of (but not limited to) meat, fish, poultry and game, meat extracts, preserved, dried and cooked fruits and vegetables, jellies, jams, eggs, milk and milk products, edible oils and fats, preserved foodstuffs, soya products, peanut butter, hazelnut puree, pulses, jams, seaweed extracts for human consumption, coconut oil, coconut milk; business mediation in the purchase and sale, including of tofu, tempeh, seitan and bean curd, processed oriental nuts, dried and processed nuts, raisins, potato crisps and chips, potato crisps, including produced using ecological and/or organic agriculture, snacks based on potatoes, dried subtropical fruits, prepared soups; business mediation in the purchase and sale, including of coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionery, ices, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, sauces (condiments), salad dressings, spices, ice; business mediation in the purchase and sale, including of preserved foodstuffs, soya products, bread, confectionery, cookies, cakes, crackers, pasta, including spaghetti, macaroni, grain-based syrups, corn syrup, beetroot syrup, soya sauce, salad dressings, spices (oriental/Asian), sauces (condiments); business mediation in the purchase and sale, including of rice, tapioca, pasta, bakmi and Chinese noodles, ginger, sambals, soya sauce, including soya sauces such as tamari and shoyu soya sauces, corn-based snacks, rice-based snack food, snack products made of rice, rice cakes and rice crackers, grain-based snack foods, chilli, peanut, satay and pepper sauces, flour and preparations made from cereals, wok sauces, noodles, natural sweeteners, agave syrup, being a natural sweetener, prawn crackers; business mediation in the purchase and sale, including of vegetarian foodstuffs and prepared dishes incorporating to a certain degree plant-based preparations (including substitutes for meat, fish, poultry and game) and tofu, tempeh, seitan, bean curd, preserved, cooked and dried fruits and vegetables; including all the aforesaid services in the context of wholesaling and retailing.

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However, the contested business mediation, including in relation to sandwich fillings, namely pastes, oriental snacks, ready-made snacks, prepared soups, oriental/Asian ingredients for meals, preserved foodstuffs, sandwich fillings, namely pastes, oriental snacks, business mediation, including in relation to oriental/Asian ingredients for meals; business mediation in the purchase and sale, including of (but not limited to) sandwich fillings, namely pastes, business mediation in the purchase and sale including of oriental snacks, ready-made snacks, oriental/Asian ingredients for meals; sandwich fillings, namely pastes, oriental snacks; business mediation in the purchase and sale, including of oriental/Asian ingredients for meals; products for packaging, including of (but not limited to) the aforesaid goods; business mediation in the printing of packaging materials and of accessories therefor and the opponent’s goods in Classes 29, 30, 31, 32 and 33 are not similar. Similarity between retail services (and, by extension, trading) of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the trading services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are dissimilar or only similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. The contested business mediation services consist in the mediation of trade business for third parties. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

The contested business mediation, including in relation to sandwich fillings, namely pastes, oriental snacks, ready-made snacks, prepared soups, oriental/Asian ingredients for meals, preserved foodstuffs, sandwich fillings, namely pastes, oriental snacks, business mediation, including in relation to oriental/Asian ingredients for meals; business mediation in the purchase and sale, including of (but not limited to) sandwich fillings, namely pastes, business mediation in the purchase and sale including of oriental snacks, ready-made snacks, oriental/Asian ingredients for meals; sandwich fillings, namely pastes, oriental snacks; business mediation in the purchase and sale, including of oriental/Asian ingredients for meals; products for packaging, including of (but not limited to) the aforesaid goods; business mediation in the printing of packaging materials and of accessories therefor are also not similar to the opponent’s services in Class 39 (transport, packaging and storage) and Class 43 (providing accommodation, food and drink). These contested services have nothing in common with any of the opponent’s services. Their fields are not directly related, they belong to different areas of activity and they have different purposes. They satisfy different needs and are provided by different types of companies. Furthermore, these services are neither complementary nor in competition. Consequently, they are dissimilar.

The services of import and export relate to the movement of goods and normally require the involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements. They are considered to relate to business administration as preparatory or ancillary to the commercialisation of the goods but not directly related to the actual retail or wholesale of such goods.

Therefore, the following contested services are similar to the opponent’s business administration all of them related to the alimentary field, as they can coincide in producers, end users and distribution channels: business mediation in the export and import, including of (but not limited to) meat, fish, poultry and game, meat extracts, preserved, dried and cooked fruits and vegetables, jellies, jams, eggs, milk and milk products, edible oils and fats, preserved foodstuffs, soya products, peanut butter, hazelnut puree, pulses, jams, sandwich fillings, namely pastes, seaweed extracts for human consumption, coconut oil, coconut milk; business mediation in the export and import, including of tofu, tempeh, seitan and bean curd, oriental snacks, processed oriental nuts, ready-made snacks, dried and processed nuts, raisins, potato crisps and chips, potato crisps, including produced using ecological and/or organic agriculture, snacks based on potatoes, dried subtropical fruits, prepared soups, oriental/Asian ingredients for meals; business mediation in the import and export, including of coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionery, ices, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, sauces (condiments), salad dressings, spices, ice; business mediation in the export and import, including of preserved foodstuffs, soya products, bread, confectionery, cookies, cakes, crackers, pasta, including spaghetti, macaroni, sandwich fillings, namely pastes, grain-based syrups, corn syrup, beetroot syrup, soya sauce, salad dressings, spices (oriental/Asian), sauces (condiments); business mediation in the export and import, including of rice, tapioca, pasta, bakmi and Chinese noodles, ginger, sambals, soya sauce, including soya sauces such as tamari and shoyu soya sauces, oriental snacks, corn-based snacks, rice-based snack food, snack products made of rice, rice cakes and rice crackers, grain-based snack foods, chilli, peanut, satay and pepper sauces, flour and preparations made from cereals, wok sauces, noodles, natural sweeteners, agave syrup, being a natural sweetener, prawn crackers; business mediation in the, export and import, including of vegetarian foodstuffs and prepared dishes incorporating to a certain degree plant-based preparations (including substitutes for meat, fish, poultry and game) and tofu, tempeh, seitan, bean curd, preserved, cooked and dried fruits and vegetables; business mediation in the export and import, including of oriental/Asian ingredients for meals; Including all the aforesaid services in the context of wholesaling and retailing.

The contested webshops is the retail of goods or commodities through the internet. Retail services in general (i.e. not limited in the specification to the sale of particular goods) are not similar to any goods that can be sold at retail (see Communication No 7/05 of the President of the Office of 31/10/2005 concerning the registration of European Union trade marks for retail services). Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different goods, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor necessarily complementary. Therefore, the contested webshops are dissimilar to the opponent’s goods in Classes 29, 30, 31, 32 and 33.

The contested webshops are also not similar to the opponent’s services in Class 39 (transport, packaging and storage) and Class 43 (providing accommodation, food and drink). These contested services have nothing in common with any of the opponent’s services. Their fields are not directly related, they belong to different areas of activity and they have different purposes. They satisfy different needs and are provided by different types of companies. Furthermore, these services are neither complementary nor in competition. Consequently, they are dissimilar.

The contested organisation of trade fairs, exhibitions and other events for commercial and advertising purposes and arranging and conducting culinary events for commercial and promotional purposes are similar to a low degree to the opponent’s advertising related to the alimentary field, as they have the same purpose. They can coincide in end users.

Advice, consultancy and information services refer to providing advice, consultancy and information on a wide range of services. They are tailored to the circumstances or needs of a particular user and they are in principle always similar, or even identical, to the services to which they relate. Therefore, the contested advice, consultancy and information regarding the aforesaid services, including provided via electronic networks such as the Internet are at least similar to the opponent’s advertising; business management; business administration; office functions, all of them related to the alimentary field where the aforesaid services relate to services that were found identical or similar in the above comparisons. This means that most of the contested advice, consultancy and information regarding the aforesaid services, including provided via electronic networks such as the Internet are similar to the opponent’s advertising; business management; business administration; office functions, all of them related to the alimentary field. Only the contested advice, consultancy and information regarding the aforesaid services [business mediation in the purchase and sale including of products for packaging, including of (but not limited to) the aforesaid goods [oriental/Asian ingredients for meals]; webshops; business mediation in the printing of packaging materials and of accessories therefor], including provided via electronic networks such as the Internet are not similar to the opponent’s advertising; business management; business administration; office functions, all of them related to the alimentary field or to any of the opponent’s remaining goods and services.

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 and services found to be identical or similar to varying degrees are directed at the public at large as well as at business customers with specific professional knowledge or expertise.

The degree of attention is considered at least average.

3. The signs

	MAKAN
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 figurative and features the word ‘macan’ in lower case letters and a handwriting-like typeface.

The contested sign is a word mark, ‘MAKAN’. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether word marks are depicted in upper case letters, as is the case with the contested sign, or in lower case letters.

The verbal elements of both signs are meaningless for the relevant public and are, therefore, distinctive.

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

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 letters ‘ma*an’, which are in the same order, notwithstanding the slightly stylised font used in the earlier mark. However, they differ in their middle letter, ‘C’ in the earlier mark and ‘K’ in the contested sign. Therefore, the signs are visually similar to an average degree.

Aurally, in Spanish the sound of the letter ‘C’ before the vowels ‘A’, ‘O’ and ‘U’ is the same as the sound of the letter ‘K’. Therefore, 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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

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5. Global assessment, other arguments and conclusion

The contested goods and services are considered partly identical or similar to various degrees and partly dissimilar to the opponent’s goods and services, and they target the public at large and professionals, whose degree of attention is at least average. Furthermore, the earlier mark has a normal degree of distinctiveness.

The signs under comparison are aurally identical and visually similar to an average degree, and the conceptual aspect has no influence on their similarity.

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).

It is further observed that the average consumer normally perceives a trade mark as a whole and does not pay attention to the various details (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

This is particularly relevant when, as in the present case, the signs have no concept that could serve to deflect consumers’ attention from the letters and sounds that the marks have in common.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s Spanish trade mark registration.

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

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

The opponent has also based its opposition on the following earlier trade marks:

European Union trade mark registration No 14 407 902 for the figurative mark  for goods in Class 33.

European Union trade mark registration No 10 315 166 for the figurative mark  for goods in Class 33.

Since these marks cover a narrower scope of goods and services, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining services because the signs are obviously not identical.

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 will decide a different apportionment of costs.

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

The Opposition Division

Fabian GARCIA

Loreto URRACA LUQUE

Gueorgui IVANOV

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.