OPPOSITION No B 2 621 954

JFC International (Europe) GmbH, Theodorstr. 293, 40472 Düsseldorf, Germany (opponent), represented by Lenzing Gerber Stute Partnerschaftsgesellschaft von Patentanwälten M.B.B., Bahnstraße 9, 40212 Düsseldorf, Germany (professional representative).

a g a i n s t

Hikari Miso Co. Ltd., 4848-1 Simosuwa-machi, Suwa-gun, Nagano-ken, Japan (applicant), represented by Urquhart-Dykes & Lord LLP, One Euston Square, 40 Melton Street, London  NW1 2FD, United Kingdom (professional representative).

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

DECISION:

1.        Opposition No B 2 621 954 is upheld for all the contested goods.

2.        European Union trade mark application No 14 770 218 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 14 770 218. The opposition is based on European Union trade mark registration No 10 585 701. 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.

1. The goods

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

Class 29:        Meat, fish, poultry and game; Meat extracts; Snacks; Preserved, dried, and cooked fruits and vegetables; Nuts (prepared); Jellies, jams and fruit purees; Eggs, milk and milk products; Edible oils and fats.

Class 30:        Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; Noodles; Flour and preparations made from cereals, bread, pastry and confectionery, biscuits, ices; Honey, treacle; Yeast, baking-powder; Salt, mustard; Vinegar, sauces (condiments); Spices; Ice.

Class 31:        Agricultural, horticultural and forestry products and grains, not included in other classes; Live animals; Fresh fruits and vegetables; Seeds, natural plants and flowers; Foodstuffs for animals, malt; Nuts.

Class 32:        Beers; Mineral and aerated waters and other non-alcoholic drinks; Fruit drinks and fruit juices; Syrups and other preparations for making beverages.

Class 33:        Wine, rice wine, alcoholic beverages.

The contested goods are the following:

Class 29:        Agar; instant soup containing agar; soup of soybean paste; deep-fried bean curd; bean curd; seaweed and fermented soybeans used as an ingredient of soup of soybean paste.

Class 30:        Soybean paste.

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 29

The contested seaweed and fermented soybeans used as an ingredient of soup of soybean paste are included in the broad category of the opponent’s preserved, dried, and cooked vegetables. Therefore, they are identical.

The contested deep-fried bean curd; bean curd; agar are prepared vegetables and, therefore, are at least similar if not identical to the opponent’s preserved, dried, and cooked vegetables, either because the contested goods are included in this broad category or because they share the same nature (having a vegetables base as their main ingredient), purpose (to feed oneself), are in competition with each other and coincide in their pertinent distribution channels and origin.

The contested instant soup containing agar; soup of soybean paste share some similarities with the opponent’s preserved, dried, and cooked vegetables. Indeed, they have the same nature and can share the same origin. They also share the same purpose, namely to allay hunger. It is true, as the applicant states, that the mere fact that a good is used as an ingredient of a prepared dish is not enough to find similarity however when the ingredient can be considered as being the main ingredient of the prepared dish, a similarity can exist (04/05/2011, T-129/09, Apetito, EU:T:2011:193, § 12 & 29). It is noted that the applicant refer to judgement T-336/03. However this case refer to different goods and the reasoning is not directly applicable in the present case. Therefore, these goods are similar.

Contested goods in Class 30

The contested soybean paste is highly similar to the opponent’s sauces (condiments). Since the contested good is under Class 30 it should be regarded a condiment. Since the conflicting goods are both condiments they share the same purpose i.e. to flavour food. Furthermore, they share the same distribution channels, end consumer and can have the same producer.

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 or similar to various degrees are directed at the public at large.

The degree of attention is considered to be average.

3. The signs

MEGUMI
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 word MEGUMI, present in both marks, has no meaning in the relevant territory and is therefore distinctive.

The contested sign is a figurative mark with the verbal elements ‘MEGUMI’ and ‘KANTEN’. The figurative element is a green circle with, what looks like a tree or algae, inside it. The verbal elements are also in green.  Its second verbal element ‘KANTEN’ means ‘the edge(s)’ or ‘side(s)’ in Swedish, Danish and Dutch. In Dutch it could also mean ‘lace’. For the public who does not understand Swedish, Danish or Dutch ‘KANTEN’ has no meaning. However, even for the part of the public who associate ‘KANTEN’ with the above meaning in Swedish, Danish or Dutch it has no meaning in relation to the relevant goods and is therefore distinctive. In addition to the above, ‘KANTEN’ is a Japanese word for a type of foodstuff, namely a type of algae (https://www.merriam-webster.com/dictionary/kanten, online 11/05/2017). For the part of the public who know the meaning of this word it is non-distinctive or weak depending on the relevant good. Considering that the majority of the public will not understand this word the Opposition Division finds it appropriate to focus on this part of the public. The figurative element and colour of the contested sign alludes to the natural origin of the goods which, considering the relevant goods, is weak. Also 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).

Unlike the view of the applicant, the Opposition Division does not find that the contested sign has any elements that could be considered clearly more dominant than other elements. The figurative element in the sign is located in the middle of two words and all elements are of similar size and colour. Therefore, there is no element in the mark that is more eye-catching than the others.

As regards the verbal elements of the contested sign, it should be noted 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. Consequently, the fact that the word that the signs have in common, ‘MEGUMI’, is at the beginning of the verbal elements of the contested sign should be taken into account in the assessment of the overall impression of the signs.

Visually, the signs coincide in the word ‘MEGUMI’ which constitutes the whole earlier mark. They differ in that the contested sign also has a figurative element and a second verbal element ‘KANTEN’. However, the figurative element is weak and is therefore of limited impact when assessing the similarity between the signs. Considering this and that the earlier mark is identical to the first and therefore more noteworthy verbal element of the contested sign, the signs are visually similar to 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 verbal element ‛MEGUMI’, which constitutes the whole earlier mark and the first verbal element in the contested sign. The pronunciation differs in the sound of the verbal element ‛KANTEN’ of the contested sign, which has no counterpart in the earlier mark.

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

Conceptually, although parts of the public in the relevant territory will associate the second verbal element of the contested sign with different meanings, as explained above, the earlier sign has no meaning in that territory. The figurative element of the contested sign also gives the concept of products from a natural origin. Since one of the signs will not be associated with any meaning, 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

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

The goods and services under comparison are partly identical and partly similar to various degrees. The marks are visually and aurally similar to an average degree and conceptually not similar. Furthermore, the earlier mark is considered to enjoy a normal degree of inherent distinctiveness.

The signs are similar on account of the verbal element that they have in common, ‘MEGUMI’, which constitutes the earlier mark in its entirety and is included as the first and, therefore, more conspicuous element of the contested sign. The marks differ in the second verbal element of the contested sign, ‘KANTEN’, and in the weak figurative element of that sign, the latter of which has lesser impact on the consumer than the verbal elements of the sign.

Consequently, given the reproduction of the earlier mark, ‘MEGUMI’, in its entirety in the contested sign, it is likely that the relevant public will at least associate the contested sign with the earlier mark in such a way as to believe that the goods at issue marketed under those marks have the same commercial origin.

Article 8(1)(b) EUTMR states that, upon opposition, an EUTM application shall not be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. 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 or services covered are from the same or economically linked undertakings.

In the present case, consumers may legitimately believe that the contested mark is a new version or a brand variation of the earlier word mark, ‘MEGUMI’, and, consequently, that the contested goods and services originate from the same undertaking that provides the goods and services identified by the earlier mark or from economically linked undertakings.

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

Therefore, the opposition is well founded on the basis of the opponent’s European trade mark registration No 10 585 701. It follows that the contested trade mark must be rejected for all the contested goods. The decision focused on the part of the public that does not understand the word ‘KANTEN’. There is no need to go look at the public who do understand this word since it is enough that a likelihood of confusion exists for a significant part of the relevant public which as concluded above is the case in this decision.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

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

Adriana VAN ROODEN

Benjamin Erik WINSNER

Catherine MEDINA

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.