OPPOSITION No B 2 667 767

Progust, S.L., Avda. Mas Vila 102 N1, Riudellots de la Selva (Girona), Spain (opponent), represented by P & T Intellectual Property, S.L., Sant Elíes 21, 3º 1ª, 08006 Barcelona, Spain (professional representative)

a g a i n s t

ΓΕΩΡΓΙΟΣ ΔΕΜΕΡΤΣΙΔΗΣ, ΓΑΝΟΧΩΡΑ, 60100 ΚΑΤΕΡΙΝΗ, Greece (applicant), represented by ΕΛΕΝΗ ΑΘΑΝΑΣΙΑΔΟΥ, ΑΓΙΑΣ ΛΑΥΡΑΣ 22, 60100 ΚΑΤΕΡΙΝΗ, Greece (professional representative).

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

DECISION:

1.        Opposition No B 2 667 767 is upheld for all the contested goods.

2.        European Union trade mark application No 14 765 473 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 765 473. The opposition is based on, inter alia, European Union trade mark registration No 7 008 154. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 7 008 154.

1. The goods

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

Class 29:        Meat, 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.

The contested goods are the following:

Class 29:        Olive oil; extra-virgin olive oil.

The contested olive oil; extra-virgin olive oil are included in the broad category of the opponent’s edible oils. 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 level of attention is likely to vary according to the category of goods or services in question.

The goods found to be identical are directed at the public at large.

The degree of attention is considered to be average.

3. The signs

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.

Conceptually, the common element ‘IMPERIA’ is not meaningful for a significant part of the relevant average public in certain territories, for example, in Greece, the Netherlands and the Dutch-speaking part of Belgium. In these territories, the main part of the relevant average public will not associate this term with the English word ‘imperial’ (meaning belonging or relating to an emperor or empire).

 

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Dutch- and Greek- speaking part of the public such as Greece, the Netherlands and the Dutch-speaking part of Belgium, where this element thus enjoys an average distinctive character.

As regards the earlier sign, besides being composed of the distinctive verbal element ‘IMPERIA’, in white, upper case letters (which are only very slightly stylised, with its beginning and ending letters ‘I’ and ‘A’ depicted in a somewhat bigger size), it is also composed of a depiction of a stylised duck, in white colour, against a black rectangular background, with a white frame. The figurative element of a duck (if perceived) does not have any meaning in relation to the goods at issue, so that it is normally distinctive. Nevertheless, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37). In the present case, the figurative element will have less impact on the consumers than the term ‘IMPERIA’.

Furthermore, the black element of a rectangular with a white frame does not have any meaning in relation to the goods neither; nevertheless, it will be perceived as a purely decorative element as it is one of the usual forms of a label used in the relevant market. Consequently, it is of limited distinctiveness for the relevant goods.

Consequently, in the present case, while the earlier mark has no elements that could be considered clearly more dominant (visually eye-catching) than other elements, its verbal element is more distinctive than the figurative elements.

As regards the contested sign, it is composed of the verbal elements ‘IMPERIA’, written in black, only very slightly stylised, upper case letters (the stylisation of which moreover strongly recalls the stylisation of the letters of the earlier mark, with a quasi-identical font and the begin and end-letters ‘I’ and ‘A’ of a slightly bigger size) and ‘Mediterraneo’, in green, slightly stylised, lower case letters, depicted in a much smaller size than ‘IMPERIA’ and positioned underneath it. Above the verbal element ‘IMPERIA’ is depicted the image of a small, green crown.

Due to its smaller size, the verbal element ‘Mediterraneo’, albeit not devoid of distinctive, is less visually eye-catching. In addition, it will be associated with olive oil originating from the Mediterranean region by a significant part of the relevant public; therefore, this element is of little distinctiveness.

As regards the figurative element depicting a crown, this will be perceived by the relevant public as referring to the high quality of the goods (considering that this symbol, in general, represents royalty) or in any event as a decorative element. In addition, it is of a smaller size. Consequently, it has very little distinctiveness.

Therefore, in the present case, in the contested sign, the common verbal element ‘IMPERIA’ is more distinctive than the verbal element ‘Mediterraneo’ and the figurative aspects.

Visually, the signs coincide in the distinctive verbal element ‘IMPERIA’ which is moreover almost identically stylised, They differ in less distinctive elements (the figurative element of a stylised duck, the white colour of the letters and the decorative element of the white-framed black rectangular, in the earlier mark, on the one hand, and the black colour of the letters and the little distinctive elements of the crown and of the – in addition, less visually eye-catching – element ‘Mediterraneo’, in the contested mark, on the other hand).  

Account must also be taken of the fact 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.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘IMPERIA’ and differs in the sound of the term ‘Mediterraneo’ of the contested sign (if pronounced at all, given its significantly smaller size, on account of which it can be easily overlooked by the relevant public and thus might not be pronounced), which has no counterpart in the earlier sign.

Therefore, the signs, if not aurally identical, are aurally similar to at least a very high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. In substance, the most distinctive element of both signs has no meaning for the relevant public. As regards the earlier mark, part of the public will perceive the image of a duck, which has no meaning in relation to the goods; in the contested sign, the public will perceive the little distinctive image of the crown and the term ‘Mediterraneo’. Bearing in mind that the relevant goods are olive oils, this element is very weakly distinctive, too. Consequently, although the signs as a whole do not have any meaning for the public in the relevant territory, to the extent that the previously mentioned less distinctive elements present in the marks refer to different concepts, the signs are not conceptually similar.

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

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).

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 covered are from the same or economically linked undertakings.

As concluded above, the contested goods are identical to the opponent’s goods. They target the public at large, whose degree of attention is average.

The signs are considered visually similar to an at least average degree and aurally similar to an at least high degree, on account of the coinciding and most distinctive element in both marks, ‘IMPERIA’, which furthermore constitutes the beginning of both signs; they are not conceptually similar only on account of less distinctive elements that refer to different concepts.

In addition, account must be 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).

Taking into account that the differences between the signs arise from secondary elements, it must be concluded that they are not capable of counteracting the similarities. Therefore, and applying the abovementioned principle of interdependence, the relevant public is likely to perceive the contested sign as a variant of the earlier mark and believe that the goods in question come from the same undertaking.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are several trade marks that include the string of letters ‘IMPERIA’. In support of its argument the applicant has filed five extracts from the trade mark registers of the Czech Republic, Italy, the United States and the Benelux. In addition to the fact that according to the extracts filed, two of the marks are refused and that two other registrations cover other classes, the Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘IMPERIA’. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the Greek- and Dutch-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 7 008 154. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right European Union trade mark registration No 7 008 154 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

Gueorgui IVANOV

Edith Elisabeth VAN DEN EEDE

Michele M. BENEDETTI-ALOISI

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.